Trade name infringement in IP cases generally refers to free-ride taking, that is, the infringing party registers a company name which contains other’s famous trademark or resembles to other well-known trade name, at the same time, the party authorizes related factory to make products bearing the company name, which misleads the consumer and make them associate the products with the well-known enterprise and gain illegal profits.

There are two types of trade name infringement
1． Hong Kong trade name infringement
It means trade name registered in Hong Kong constitute infringement, for example, BENZ International (Hong Kong) Co., Ltd (奔驰国际（香港）有限公司)

2． Mainland trade name infringement
It refers to the infringing trade name registered in mainland China, for example, Wuhan BENZ Electric Appliance Co., Ltd (武汉奔驰电器有限公司).

This article sheds light on how to deal with the illegal trade name registered in
Mainland China, BOB summarizes the procedure, outlines the legal basis as
well as the required evidences prepared for the illegal trade name cases for
the IPR holder’s reference.

I. Legal basis

II. Main Approaches

1. Send a lawyer letter
2. File complaint to law-enforcement authority（AIC has the jurisdiction over the trade name infringement）
3. Lodge a civil litigation to court.
Frankly speaking, a lawyer letter stands very few chance of successfully changing the illegal trade name. Normally, the trade name infringement would be solved via administrative approach or even judicial approach. While the latter two approaches call for strict evidences.

III. Required evidences

The key point in handling trade name infringement lies in evidence submission: popularity of the registered trademark and the bad-faith of the infringer.

Remark: It is quite idealistic to prepare such a list of evidences, which, on most occasions, could not be achieved. Not every item of the evidence is required, but the more, the better. The case will not be affected if the registered trademark enjoys higher popularity.

IV. Procedure chart

These days, on behalf of the IPR holder, BOB has disposed of several trade name infringement cases via the administrative approach, and all the local AIC support our claim.

Here is our detailed implementation procedure chart:

The following are part of the evidences:

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V. Time required

It takes about 3 to 6 months to complete the modification or revocation of the illegal trade name via administrative approach.
It takes about 6 to 12 months to complete the modification or revocation of the illegal trade name via judicial approach.

VI. Conclusion

According to the procedure chart, it would be idealistic that the infringing party takes initiatives to change or revocation the trade name after the lawyer letter was sent. However, for the infringing party is always very stubborn, and the reality is the trade name infringement would be possibly resolved via administrative approach or even via the lawsuit.
Based upon our practical experience, the local AIC is more active and cooperative in accepting and dealing with the trade name infringement cases, compared with the previous years. It is advisable for the IPR holders to handle the infringing trade name via administrative approach.

The author: IPR protection dept. of
BOB Intellectual Property Service Ltd.
2015-05-13