With a view to duly hearing civil cases of dispute arising from conflicts between registered trademarks or enterprise names and prior rights, these Provisions have been hereby formulated under the Civil Procedure Law of the People’s Republic of China, the General Principles of Civil Law of the People’s Republic of China, the Trademark Law of the People’s Republic of China, and the Unfair Competition Law the People’s Republic of China, and with reference to the judicial practice.

Article 1 Where a plaintiff institutes lawsuit on the ground that using the word or device of another party’s registered trademark has infringed his/its prior right, such as the copyright, design patent right or enterprise name right, and the law suit complies with the provision of Article 108 of the Civil Procedure Law, the people’s court shall accept the case.

Where a plaintiff institutes lawsuit on the ground that another party’s trade mark registered in respect of approved goods is identical with, or similar to, his/its prior registered trademark, the people’s court shall, under Article 111 (3) of the Civil Procedure Law, notify the plaintiff to file a request with the relevant competent administrative authority for settlement. However, where a plaintiff institutes lawsuit on the ground that another party’s registered trademark that has been used in respect of goods other than those in respect of which the trade mark has been approved to be used or which he/it has used with altered distinctive character, by taking it apart or putting it together with other elements is identical with, or similar to, the plaintiff’s registered trade¬mark, the people’s court shall accept the case.

Article 2 Where a plaintiff institutes lawsuit on the ground that another party's enterprise name is identical with, or similar to, his/its earlier enterprise name, is sufficient to crest confusion on the part of the relevant sector of the public about the origin of the goods, and is contrary to Article 5 (3) of the Unfair Competition Law, and where the lawsuit complies with the provision of Article 108 of the Civil procedure Law, the people’s court shall accept the case.

Article 3 The people’s court shall, at the plaintiff’s request and according to the nature of the civil legal relations involved in the dispute, determine the cause of action of the

conflict between a registered trademark or enterprise name and a prior right, and apply the corresponding law under the Provisions Concerning Cause of Civil Action (Tentative).

Article 4 Where an accused enterprise name infringes the exclusive right to use a registered trademark or constitutes an act of unfair competition, the people’s court may, at the plaintiff’s litigant requests and according to the specific circumstances of the case, decide to hold the defendant liable for ceasing and desisting from using the enterprise name, or for using it in a due manner.

Opinions of the State Administration for Industry and Commerce on

Resolving Certain Issues Involved in Trademarks and Enterprise Names

(Issued on April 05,1999)

To the administrations for industry and commerce of provinces, autonomous regions, municipalities directly under the Central Government, and specially designated cities in the State plan:

In order to effectively implement the Trademark Law and the relevant provisions on the registration and administration of enterprise names, protect the exclusive right to use a trademark and the enterprise name right, and maintain fair competition in market and the social and public interest, we hereby specify the following opinions on resolving certain issues involved in trademarks and enterprise names:

1. Both the exclusive right to use a trademark and the enterprise name right are rights acknowledged through relevant statutory procedures and shall be protected by laws and regulations on trademarks and on the registration and administration of enterprise names respectively.

2. The exclusive right to use a trademark and the enterprise name right shall be obtained in compliance with the principle of good faith specified in the General Principles of the Civil Law and the Anti-Unfair Competition Law and any use of the good faith of another's trademark or enterprise name for unfair competition shall be prohibited.

3. Trademarks are marks that distinguish the sources of different commodities or services, and consist of words, devices, or a combination thereof. Enterprise names are the marks that distinguish market subjects. An enterprise name is composed of the name of the administrative division, the trade name, and industrial or business feature, and organizational form of the enterprise. Among the four parts, the trade name is the principal mark for distinguishing enterprises.

4. Where the words used in a trademark are identical or similar to the trade name included in an enterprise name, consequently creating confusion (including the likelihood of confusion) over the market subject and the source of goods or services, such use of the words shall constitute unfair competition, and shall be prevented in accordance with the law.

5. For the purposes of the preceding Article, confusion shall mainly include:

(1) Registering as a trademark the words identical or similar to the trade name included in another's enterprise name which confuses or misleads the relevant public as to the owner of the enterprise name and the trademark registrant; and

(2) Registering the words identical or similar to another's registered trademark as the trade name in an enterprise name which confuses or misleads the relevant public as to the trademark registrant and the owner of the enterprise name.

6. To resolve the confusion (including the likelihood of confusion) between a trademark and an enterprise name, the principle of maintaining fair competition and protecting the interests of the lawful owner of the pre-existing right shall be applied.

7. A case of confusion between a trademark and an enterprise name (including the likelihood of confusion) shall satisfy the following conditions before the confusion resolution procedures are taken:

(1) The confusion between the trademark and the enterprise name exists and harms the lawful interests of the pre-existing right owner;

(2) Both the trademark and the enterprise name have already been registered; and

(3) The request is filed within five years of the date of the trademark registration or the enterprise name registration (including the circumstance where a request has been made but no resolution is made) except for malicious registration.

8. Where a trademark registrant or an enterprise name owner believes that the relevant rights and interests are harmed, the registrant or the owner may file a written complaint with the State Administration for Industry and Commerce or the relevant provincial administration for industry and commerce, accompanied by the relevant evidentiary materials of the rights and interests being harmed.

9. The administration for industry and commerce at the provincial level shall handle the case involving confusion between a trademark and an enterprise name if it occurs in one administrative region at the provincial level; or the State Administration for Industry and Commerce shall handle the case if it occurs in more than one administrative region at the provincial level.

With respect to a case concerning a request for protection of the exclusive right to use a trademark, it shall be handled by an enterprise registration department under the administrative department for industry and commerce at or above the provincial level; where the change of an enterprise name is necessary, the department handling the case shall make a decision in conjunction with a trademark administrative department in accordance with the relevant provisions relating to the administration of enterprise name registration, shall deliver the decision to the department for verification of enterprise names for enforcement, and shall file it with the Trademark Office and the Enterprise Registration Bureau of the State Administration for Industry and Commerce for record-filing.

A case concerning a request for protection of the enterprise name right shall be handled by an enterprise registration department under the administrative department for industry and commerce at or above the provincial level. Where the cancellation of a registered trademark is necessary, the department handling the case shall submit its opinion to the Trademark Office of the State Administration for Industry and Commerce for a decision. The Trademark Office and the Enterprise Registration Bureau of the State Administration for Industry and Commerce shall handle the case in accordance with the relevant provisions of the Trademark Law and the Detailed Rules for the Implementation of the Trademark Law.

10. Any use of a trademark or enterprise name in violation of the relevant provisions on trademark administration and enterprise name registration, which creates confusion, shall be subject to the investigation and punishment by the relevant competent administrative authority for industry and commerce in accordance with the law.