Professional IP team
Junlong law firm have been committed to the professional and extensive practice of intellectual property law, and have been striving to become a leading patent boutique firm in China.
We offer extensive experiences in all facets of intellectual property service, litigation and dispute resolution, portfolio management, due diligence, securing and maintaining worldwide IP rights, and worldwide intellectual property licensing.
Our intellectual property team includes 30+ experienced attorneys-at-law and patent attorneys, and 60+ skilled technical experts, focusing on telecommunication, customer electronic, semiconductor mechanical, and biomedicine.
Our goal is “Bridging IP Rights and Successful Business”.
Supreme People’s Court (2009) Minshen No. 268
The Supreme People’s Court held that use that does not play the role of identifying the source or the producer cannot be deemed as use in the sense of the trademark law. Therefore, the use of the same or similar mark by others does not constitute acts that infringe the exclusive rights of registered trademarks.
Unregistered trademarks are protected by law, but the prerequisite for protection is that they can actually function to distinguish the source, rather than the possibility of identifying the source of the goods or services. This prerequisite is embodied in Article 13 of the Trademark Law (regarding protection of well-known unregistered trademarks), in Article 31 of the trademark Law (regarding priorly used marks having certain influence), and in Article 5(2) of the Anti-Unfair Competition Law (protection of unique name, outer packaging, and the packaging of well-known goods).
If a party wishes to claim rights over an unregistered trademark, he or she must have used the claimed mark as a trademark intended to identify the source of goods. In other words, the party can establish rights of a trademark only after he intends to use the mark in a way to distinguish the supplier or distributor.
In this case, Pfizer Inc. claimed that the Chinese character “伟哥” is an unregistered well-known trademark, and shall be vested in Pfizer Inc. The Judge from the Supreme People’s court reasoned that although a variety of social media reports associated the Chinese character with the registered trademark “Viagra”, these actions were not performed by Pfizer Inc. That is, Pfizer Inc. did not use the Chinese character to identify their products. Besides, these reports were all about the efficacy, sales, and side effects of the product. Pfizer also clearly stated that “Viagra” is its trademark, and that it has never used “伟哥” in mainland China. Therefore, “伟哥” cannot be determined to reflect the true intention of Pfizer to use it as an identifying trademark. Therefore, the evidence provided by Pfizer for judicial review was insufficient to prove that “伟哥” was eligible for the protection as an unregistered trademark. Although many media reports used “伟哥” instead of “Viagra”, Pfizer and others did not use it as a trademark either objectively or subjectively, so Pfizer cannot claim protection of this Chinese character as unregistered trademark.
Regardless of a registered trademark or an unregistered trademark, the basis for its legal protection is ultimately reflected in its function to identify source of goods. If a use is found to cause confusion as to the source of the goods or services, then it may constitute a trademark infringement if other legal standards are also met.