A trademark application in China can collide with rights that never appear in the trademark register at all: a restaurant chain's trade name, a logo owned under copyright, a design patent, even a founder's online nickname. In December 2022 the China National Intellectual Property Administration (CNIPA) issued a guide on how market players can avoid conflicts between trademarks and such earlier rights when applying for, registering and using marks. This post summarises the guide's scope, the practices it sets out, the conflict situations it describes, and the outcomes recorded in its worked examples.

What Counts as a Prior Right in China

The guide defines prior rights as rights or interests that already existed and lawfully subsisted before the filing date of the trademark application. It lists eight categories: trade name rights; copyright; design patent rights; name rights; portrait rights; geographical indications; the names of goods or services that have acquired some influence, together with their packaging and decoration; and other lawful interests that deserve protection.

One boundary detail is easy to miss: earlier trademark rights are deliberately left out. The guide notes that prior trademark rights are addressed by separate provisions, so "prior rights" in this document refers to everything else — a point worth keeping in mind when reading opposition and invalidation decisions that cite this ground.

Trade names receive particular attention. A Chinese company name generally consists of an administrative-region name, a trade name, an industry descriptor and the company form; the trade name is the element that distinguishes one business from another. An abbreviation that has built a stable association with the company is protected as well, and the names of public institutions, partnerships and individually owned businesses can be protected by analogy. When weighing a conflict, the guide states that assessment generally combines the originality and fame of the earlier trade name with how close the goods or services actually are.

Four Practices the Guide Sets Out

Apply as needed and use genuinely. The guide frames the whole document around the principle of good faith and asks businesses to build the habits of filing when there is a real need, using marks genuinely and protecting them reasonably — steering away from hoarding marks, latching onto well-known names, free-riding on others' reputation or chasing trending topics.

Search before filing or using. Before applying for or using a mark, the guide asks businesses to carry out thorough searches of others' prior rights, and it names channels beyond the trademark register: general internet searches, the National Enterprise Credit Information Publicity System for company names, and CNIPA's patent search and analysis system for design patents. A lawfully established trademark agency can be entrusted with these searches. Trade names, copyrights and design patents simply do not appear in a trademark database, so a clear register check covers only one of the places a conflict can hide.

Obtain permission where there is a conflict. Where a sign a business intends to file or use does conflict with another party's prior right, the guide asks the applicant to obtain the rights holder's permission first and then stay within the scope of that authorisation when using the mark.

Use the registered mark as registered. The guide warns against altering a registered mark's distinctive features, or splitting and recombining its elements, in ways that create conflicts with others' prior rights.

Eight Situations Where a Mark Can Clash

The guide's longest part walks through eight conflict situations, each with a decided case.

Trade names. In one invalidation case, a restaurant chain founded before the disputed filing date had built its "Xibei Youmian Cun" trade name into a name known among diners — a phrase with no ordinary meaning in modern Chinese, giving it pointed direction and some originality. The identical mark designated goods such as flatbread, closely associated with the chain's catering services, and the mark was invalidated.

Copyright. Xiaomi Corporation opposed an application whose "MI" element was held substantially similar to an earlier graphic work; a copyright registration certificate helped establish earlier ownership, and the application was not registered. The guide notes that earlier copyright is generally assessed on publication evidence, evidence that a work was created earlier, and registration certificates, with effective court judgments as corroboration.

Design patents. A figurative mark highly similar to a patented design for a six-blade electric motor — filed earlier and still within its protection period — was invalidated. Comparisons can be made on the design as a whole or on its main parts.

Names. Protected names go well beyond household-registration names: pen names, stage names, translated names, nicknames, aliases and online names all count once they have some fame and a stable association with the person. In one opposition, the online name of the founder of the Three Squirrels snack brand — "Songshu Laodie Zhangsanfeng", roughly "Squirrel Dad Zhang Sanfeng" — clashed with an application "Songshu Zhangsanfeng" for processed nuts; the application was not registered. The guide adds that names of martyrs, deceased celebrities and religious figures can also raise separate issues under provisions on deceptive signs and signs harmful to public order.

Portraits. A photograph of a person can be filed as a mark by someone other than its subject, and depictions that clearly point to a person — paintings, sculptures — are covered too. One application whose graphic element differed only marginally from the facial features of the chairman of a Shanxi millet group was not registered.

Geographical indications. Applications identical or similar to an earlier geographical indication are to be avoided; assessment considers the indication's objective existence, fame and distinctiveness, public perception, and any intent to free-ride on its reputation.

Influential product names, packaging and decoration. In an invalidation case, the stylised "Tuocha" element on the packaging of a well-known Yunnan tea product — after extensive publicity and strong sales — was copied almost exactly by a later mark for tea goods; the later mark was invalidated.

Work titles and character names. The guide records three further outcomes: a mark identical to "Black Cat Detective", the title and character name of an animated series first broadcast in 1984, was invalidated; a mark identical to the game title "Honor of Kings" was invalidated; and an application combining "Luo Tianyi" — a virtual singer whose Chinese-language voice library was launched in July 2012 — with its pinyin was not registered.

What Happens When a Mark Clashes

The guide closes with three consequences.

Through the rights holder: a prior rights holder may file an opposition against a published application or seek invalidation of a registered mark.

Through the office: where an application is found to be malicious squatting, it may be refused outright or invalidated on the office's own initiative. The guide cites marks matching the names of Olympic athletes — Yang Qian, Chen Meng and Quan Hongchan among them — and a well-known Winter Olympics mascot. It also records that dishonest conduct in malicious registration can bring disciplinary measures under CNIPA's intellectual property credit management provisions.

Through the courts: using another party's prior-right sign without permission, or using a registered mark in a non-standard way that creates such a conflict, can lead to civil proceedings before the people's courts, with orders to stop the use and awards of damages.

Frequently asked questions

Does "prior rights" in China include earlier trademarks?

No. The guide states that earlier trademark rights are protected under separate provisions and are therefore outside its scope. Its eight categories — trade names, copyright, design patents, names, portraits, geographical indications, influential product names and trade dress, and other lawful interests — are all non-trademark rights. Opposition and invalidation decisions cite different grounds depending on which track applies, so the two tracks are worth reading separately.

Which names count beyond a person's registered name?

Pen names, stage names, translated names, nicknames, aliases and online names, where the name has some fame and a stable association with the person. The worked example involved a snack-brand founder's online name and an application for processed nuts, which was not registered. The guide also treats names of martyrs, deceased celebrities and religious figures as a separate concern under provisions on deceptive and harmful signs.

What evidence is used to prove an earlier copyright?

Publication evidence, evidence that the work was created earlier, and copyright registration certificates; effective court judgments can corroborate. In the guide's own example, a registration certificate together with records of long use and wide publicity supported the findings of earlier ownership and that the other party had access to the work.

Can a conflicting application be stopped without the rights holder acting?

In the situations the guide describes as malicious squatting, yes: it records applications refused outright or invalidated on the office's own initiative, including marks matching Olympic athletes' names, and links such conduct to disciplinary measures in CNIPA's intellectual property credit system. Otherwise, the guide's stated remedies run through opposition, invalidation or civil proceedings brought by the rights holder.

Related guidance for overseas owners

See When a China Distributor or Manufacturer Registers Your Brand: Evidence and Remedies for a focused explanation based on the 2021 Guidelines, with source references and checks against later official material.

Official sources

Related reading

Planning a China trademark application? Request a search result and a fee quote for your mark.