Prior rights refer to civil rights and lawful interests that arose or existed in accordance with the law before the filing date of the trademark in dispute. Article 32 of the Trademark Law provides that "an application for trademark registration shall not harm another party's existing prior rights", making it the core provision for relative grounds in opposition and invalidation proceedings.
Main Types
- Prior trademark rights and interests: prior registered trademarks, prior filed trademarks (separately governed by Articles 30 and 31), and unregistered trademarks in prior use with a certain influence;
- Copyright: artistic LOGOs, stylized lettering, cartoon characters, photographic works, etc.;
- Name rights: the names of natural persons, especially the names, pen names, and stage names of celebrities with a certain degree of fame;
- Portrait rights: a natural person's portrait used as a trademark graphic;
- Enterprise trade name rights: trade names of enterprises registered earlier and having a certain influence;
- Design patent rights: designs from prior design patents used as trademarks;
- Other lawful interests: trade dress such as influential product names and packaging, domain names, geographical indications, etc.
Constitutive Elements
To assert prior rights in an opposition or invalidation, one typically must prove:
- The right is genuine, valid, and clearly owned: e.g., copyright registration certificates and drafts, trademark registration certificates, enterprise registration archives;
- Timing comes first: the right arose before the filing date of the trademark in dispute;
- Conflict of marks: the trademark in dispute is identical or substantially similar to the subject matter of the prior right;
- Possibility of harm: registration and use of the trademark in dispute would cause public confusion, or unfairly exploit or damage the reputation and interests of the prior right.
Use in Procedures
- Opposition (Article 33): prior rights holders or interested parties may oppose an announced trademark;
- Invalidation (Article 45): prior rights holders or interested parties may request invalidation within five years of registration; for bad-faith registrations, the owner of a well-known trademark is not bound by the five-year limit;
- Review of refusal: when an application is refused based on a cited trademark, the obstacle can also be cleared by filing an invalidation or non-use cancellation against the cited trademark.
Key Points of Proof
- Copyright: work registration + creation drafts + evidence of publication time; if the registration date postdates the filing date, reinforcement is mandatory;
- Trade name rights: business license, years of operation, and evidence of the trade name's fame;
- Unregistered trademarks: use evidence predating the filing date, reaching the level of "a certain influence"—sporadic use is insufficient.
Division of Labor with Absolute Grounds
Prior-rights provisions protect only the private interests of specific rights holders, must be asserted by the rights holders themselves, and are subject to the five-year limit; absolute-grounds provisions protect the public interest and the registration order, may be asserted by anyone, and are not time-limited. In practice the two are often combined to broaden the attack.
The practical judgments behind this concept depend on the individual case; before proceeding, you may book a registered agent on MyTMBee for a targeted analysis.