With the fast development of the economy, businesses are more conscious of the need to include trademark protection in their corporate development strategies. Trademark agencies are springing up all over these days. Apart from acquiring a complete trademark registration system, big corporations are increasingly focusing on trademark administration and protection. Conflicts between trade names and registered trademarks are common in practice. In this post, we’ll look at the conflicts between later business names and prior registered trademarks.
The name of the business, as well as the name of the main brand, would be a critical consideration throughout the enterprise planning process. After deciding on a business name, it is submitted for evaluation and registration to the Administration for Market Regulation (AMR); after deciding on a brand name, it is submitted for review and registration to the State Intellectual Property Office. Despite the fact that both are granted after an official review, they may conflict with the rights of other third parties. The conflict between later trade names and prior registered trademarks is the focus of this article.
In practice, users of the later trade name will always hold the same position, namely, the trade name was approved by the SAIC (now renamed as AMR), a business license was granted, and I have the right to use the name as shown on the license. In reality, while considering a company name, the AMR will not carefully consider if it clashes with an already registered trademark. The difference between the registration authority and the review system might be the reason for this.
The use of a prior registered trademark as a company name is accused of being unfair competition against the registrant under the aforementioned legal rules. In addition to a stable right to exclusive use of a prior registered trademark, the following considerations must be taken into account when deciding whether its action is unfair.
1. The trademark’s designated goods/services and the company’s business scope are similar
An essential measuring aspect is whether the parties involved have a competitive relationship. If they are completely unrelated and no link can be established, the chances of producing misunderstanding among the public at large are small.
2. Whether the prior registered trademark has been extensively utilized and gained a significant amount of influence
Maintaining a fair and sound market competition environment is a notion that must be followed throughout unfair competition instances. In the case of registered trademarks that have not been put into actual use, even if the registration date is relatively earlier, the court will make a prudent judgment because they have not established market competitiveness with the protected trademark as the core value, and they have no reputation in the relevant industry. From the standpoint of the trademark’s role of identifying the source of goods/services, such a function is likewise impossible to perform for unused marks, and the repercussions of deceiving the public would not be caused.
On the contrary, trademarks that have been put into actual use and constantly and consistently promoted by the registrant in order to obtain higher popularity, particularly in the vicinity of the enterprise’s location, have a higher chance of causing consumer confusion, which means they are more likely to be protected.
As a result, when a trademark owner files unfair competition litigation, he or she can also make a request for well-known trademark recognition.
3. Whether the company name’s owner is infringing on a prior registered trademark in bad faith
In addition to the obvious elements, the owner’s subjectivity is quite crucial. If a trademark registrant can show that the other party has the bad intentions of “free-riding” and is attempting to try to copy a prior registered trademark in order to attract relating consumers and gain market awareness instantly, the court will be persuaded to a degree in determining whether there is unfair competition.
In brief, when a later company name conflicts with a previously registered trademark, the owner of the later company name may indeed be engaging in unfair competition against the registrant of the earlier trademark, but the competitive relationship between the two parties, trademark use, and the subjective status of the trade name owner must all be taken into account. If the owner of the trade name additionally involves prominently displaying the alleged infringing trade name on a product, this might be considered trademark infringement. Companies can use the following variables to evaluate potential infringers in connected sectors and decide effective rights protection methods when improving trademark administration and protection systems.
The list of international IP Firms can be found here.