Conflict of rights between well-known trademarks and registered trademarks: Rules for the Application of Judicial Interpretations, Cross-category Protection Judging Standards and Typical Cases

Once the trademark is approved for registration, As long as it is used in a standardized manner within the scope of the designated goods or services, Generally regarded as legitimate use of a trademark, This seems to have become common sense and a consensus.. However, Cases in recent years in judicial practice where owners of well-known trademarks directly sue the owners of registered trademarks for infringement in civil cases, Breaking this inherent perception.

Article 13, Paragraph 2 of the Trademark Law, Paragraph 3 stipulates, Infringement of exclusive rights to well-known trademarks, Registration not allowed and use prohibited. Registered trademarks represent the credibility of legal documents of state agencies, Well-known trademarks represent the vital interests of well-known trademark owners and consumers.. When two rights conflict, which one should be protected first?, seems to constitute a dilemma. But carefully study the relevant legal provisions, Analyze judgments in relevant cases, Legal and reasonable conclusions can be drawn.

one, Relevant legal provisions

2008The Supreme People's Court's Notice on the Trial of Registered Trademarks, Provisions on Several Issues in Civil Disputes Cases Conflicting between Enterprise Names and Prior Rights", Article 1, Paragraph 2: “The plaintiff files a lawsuit on the ground that the registered trademark used by others on the approved goods is identical or similar to its previously registered trademark., The court should inform the plaintiff to apply to the relevant administrative authority for settlement.. "This judicial interpretation provides a solution to the situation where there is a conflict of rights between registered trademarks..

in practice, When faced with a conflict of rights between two registered trademarks, as a lawyer or agent, Often, parties are advised to go through non-litigation procedures based on this judicial interpretation., Attack the other party’s rights foundation by declaring invalidity or not using revocation for three consecutive years., After the other party's registered trademark is invalid or revoked, then file a subsequent civil infringement lawsuit with the court.. When the trademarks of both parties are non-well-known trademarks, This suggestion is advisable.

2009According to Article 11 of the "Interpretation of the Supreme People's Court on Several Issues concerning the Application of Law in the Trial of Civil Disputes Involving the Protection of Well-known Trademarks": “The registered trademark used by the defendant violates the provisions of Article 13 of the Trademark Law, copy, Imitation or translation of the plaintiff’s well-known trademark, Constituting infringement of trademark rights, The People's Court shall, at the request of the plaintiff,, The defendant is prohibited from using the trademark according to law.. "The above judicial interpretation provides another solution to the conflict of rights between previously registered well-known trademarks and general registered trademarks.. When the owner of a well-known trademark is the plaintiff, You can file a lawsuit directly with the People's Court, Use of infringing logos is prohibited, No need to go through non-litigation procedure first.

That is to say, Even if the allegedly infringing mark has been registered, If the registered trademark is copied, Imitation or translation of the plaintiff’s well-known trademark, Then the trademark infringement is still established, Registered trademarks are also prohibited from use. There seems to be a conflict of application between the two judicial interpretations, In fact, the latter is a new law, It is also a special clause of the former.

The new law is better than the old law, Rules of legal interpretation that privilege special laws over general laws, Although a well-known trademark is a registered trademark, However, you can claim to be well-known based on the 2009 Judicial Interpretation of Well-known Trademarks and directly defend your rights through civil litigation.. That is to say, Generally, registered trademarks are unconditionally applicable to the above-mentioned 2008 Judicial Interpretation on Conflict of Rights., Registered well-known trademarks can choose to use any of the two judicial interpretations..

This provision provides the owners of well-known trademarks with due protection., Avoid well-known trademark owners from spending too much time and money in administrative non-litigation procedures, Preventing the risk of further expansion of infringement damage in the process. The consequences of a registered trademark being banned through infringement proceedings are, Although the trademark is still a registered trademark, but cannot be used, In vain. This reflects that the protection intensity and scope of registered well-known trademarks are higher than that of general registered trademarks., Consistent with the legislative intent of the Trademark Law.

Article 13, Paragraph 3 of the Trademark Law stipulates: “A trademark applied for registration on different or dissimilar goods is a copy., Imitate or translate someone else’s well-known trademark that has been registered in China, mislead the public, causing the interests of the well-known trademark registrant to be harmed, Registration not allowed and use prohibited. "Article 13 of the Trademark Law has already provided for the protection of well-known trademarks., Includes two connotations: "No registration" and "Prohibited use", That is, unregistered trademarks will be "not registered" when applying., Registered trademarks can also be "prohibited from use". The above judicial interpretations are specific provisions based on a correct understanding of legal provisions..

two, Judicial cases

recent years, Shenzhen, Jiangsu, There have been several cases in Guangdong provinces and the Supreme People's Court where plaintiffs claimed that previously registered trademarks have become well-known, And use its well-known trademark as the basis of rights, Cases prohibiting the defendant from using a subsequently registered trademark. in these cases, The court fully explained that registered well-known trademarks belong to a higher level of rights than general registered trademarks..

[Case 1] Mobil “Esso” case by Guangdong High Court

Case number: (2014)Guangdong and Gao Fa Min San Zhong Zi No. 244, (2025)Min Shen Zi No. 404

2012Year, The plaintiff Mobil Company requested the Guangzhou Intermediate People’s Court of Guangdong Province to recognize its “Esso” trademark on Class 4 industrial oil as a well-known trademark., and use this as the basis of rights, It is claimed that the use of "ASOO Esso" on the products of the defendant Esso Technology Company in Category 7 "Automotive Supplies" and other products constitutes infringement., should be prohibited.

The court of first instance held that the defendant had registered the trademark "ASOO" on Class 7 goods., and the trademark has been registered for more than 5 years, Therefore, the plaintiff’s infringement accusation is not supported.. The Guangdong High Court of the second instance pointed out that, The plaintiff has filed a dispute application against the defendant’s registered trademark within the 5-year period., The provisions beyond the dispute period do not apply. also, "According to the provisions of Article 11 of the Interpretation of the Supreme People's Court on Several Issues concerning the Application of Law in the Trial of Civil Disputes Involving the Protection of Well-known Trademarks", Regardless of whether Esso Technology Company and Esso Car Detailing Company have applied for or even been approved for trademark registration of the 'Esso' or 'ASOO' trademark on a certain class of goods., Mobil Corporation has the right to seek civil remedies to prohibit the use of subsequently registered trademarks., This prevents Esso Technology Company and Esso Car Beauty Company from imitating their well-known trademarks and using them as trademarks on different and dissimilar goods in actual business activities., mislead the public. "The final verdict was that the defendant "immediately cease infringement of ExxonMobil's trademark rights". The case appeared in the 2014 White Paper on Judicial Protection of Intellectual Property issued by the Guangdong High Court..

in the retrial ruling, The Supreme People's Court once again confirmed the correctness of the Guangdong High Court's application of the law, It is considered that the cited trademark is well-known and related to the designated goods., "Even if Esso Technologies holds the registered trademark 'Esso' or 'ASOO', Mobil Corporation also reserves the right to prohibit the use of Esso Technologies Inc. and Esso Auto Detailing Inc.. "With the Supreme Court's precedent as a guide, Subsequently, more cases have emerged in which registered well-known trademarks were directly sued for infringement and banned..

[Case 2] Jiangsu High Court “Ariston” Case

Case number: (2025)Su Zhimin’s final word No. 00211

Plaintiff Ariston Thermal Products(China)Ltd., Litigation was filed on the basis of rights based on the trademark No. 1255550 "" registered on Class 11 water heaters and other goods., Claims that the defendant uses the Chinese logo "Ariston" on Class 6 integrated ceilings and other products, "ALSD0N" logo infringement. Defendant in Category 6 Metal Ceiling, The ceiling products have the registered trademark No. 8199907 "ALSD0N", Registered trademark No. 8199995 "Ariston".

The two courts held that: first, The integrated ceiling and water heater in this case belong to different categories, This case involves cross-class protection, Well-known recognition is required as a prerequisite for protection, Necessity to recognize well-known, And the plaintiff’s trademark has become well-known; Secondly, The accused logo is a registered trademark, For conflicts between registered trademarks, After the judicial interpretation of well-known trademarks is implemented, two situations will be distinguished and dealt with., For conflicts between common registered trademarks, Still in accordance with the judicial interpretation of conflict of rights, be resolved through administrative channels, As for the conflict between well-known trademarks and registered trademarks, The court can directly rule against the defendant who constitutes infringement and ban its registered trademark.. This case is the first of the "Top Ten" typical cases of judicial protection of intellectual property rights in Jiangsu courts in 2025..

[Case 3] Shenzhen High Court “John Deere” Case

Case number: (2025)Jingminzhong No. 413

Plaintiff Deere & Company, John Deere(China)Investment Co., Ltd. is based on its well-known trademark No. 206346 "JOHNDEERE" / trademark No. 7879578 "John Deere" registered on Class 7 agricultural machinery and other goods, and the well-known trademark No. 206347 "JOHNDEERE" registered on Class 12 tractors and other goods., Request the court to determine that the trademark No. 11730705 "Jialian Deere" used by the defendant on Class 4 industrial oil and other products constitutes infringement..

What is special about this case is that the court held that the Class 4 industrial oils and other products used by the defendant were similar to the goods with well-known trademarks registered by the plaintiff., However, this does not affect the court's application of the provisions of Article 11 of the Interpretation on the Trial of Civil Disputes concerning the Protection of Well-known Trademarks., That is to say, the plaintiff is identified as Category 7, 12The registered trademark is well-known in the category, Defendant is prohibited from using the later registration.

first, Regarding the necessity of recognition of the plaintiff’s trademark, The Shenzhen Higher People’s Court pointed out that, Although the literal interpretation of Paragraph 2 of Article 13 of the Trademark Law of 2001 and Paragraph 3 of Article 13 of the Trademark Law of 2013 is to grant protection to well-known trademarks that have been registered in China on goods that are not identical or similar., But based on the principle of "heavy weight to lighten the light" stipulated in the law, From the perspective of purpose explanation, A similar trademark that is obviously identical or similar to a registered well-known trademark and is approved for use on goods, It should also be included in the protection of well-known trademarks.

The court further stated, Conflicts in rights arising from exclusive rights to registered trademarks, There are already specific prohibitive provisions in trademark law, Business ethics based on good faith, Even if someone else is using a trademark that has been approved for registration, But because well-known trademarks are higher, stronger, Considerations for a Wider Scope and Degree of Protection, At this time, as long as the cancellation period stipulated in the Trademark Law and the time of application for registered trademark by the alleged infringer are not exceeded,, The trademark previously claimed for protection has become well-known, At this time, the people's court can resolve the conflict of rights between different registered trademarks accordingly., and determine whether it constitutes a well-known name based on the circumstances of the case.. This case was selected as a typical case evaluated by the Shenzhen Intellectual Property Court at the end of 2025 in the three years since its establishment..

three, Conclusion

To sum up, Once a trademark is registered, there is no risk of infringement as long as it is used in a regulated manner.. For those who at the time of application are based on copy, imitation, Translating a well-known trademark with bad intentions and luckily allowing registration and use of the trademark, Court grants owner of well-known trademark civil remedy to prohibit its use, This is in line with the legislative intent of the Trademark Law to provide relatively strong protection for well-known trademarks.. The Trademark Law and relevant judicial interpretations have provided the legal basis for ordering the defendant to cease use., The court can and should directly adjudicate this type of case, To prevent "delayed justice", Forcing the parties concerned to fall into the long-awaited administrative and judicial proceedings for trademark invalidation., Infringement cannot be curbed in time, The rights holder’s interests will also be completely lost., This is obviously contrary to the spirit of the above-mentioned laws and judicial interpretations.