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20 August 2018
Article 10bis of the Paris Convention,(1) together with the Agreement on Trade-Related Aspects of Intellectual Property Rights, forms the cornerstone of China's legislative framework on the protection of commercial signs. This legislative framework comprises:
The legislature had been planning the recent amendments to the Anti-unfair Competition Law since China's accession to the World Trade Organisation. During the four drafts that followed, substantial changes were made concerning important issues such as the theft of trade secrets. However, as regards the principles set out in Article 10bis of the Paris Convention, most of the main concepts and principles of the original 1993 text have been maintained.
This update analyses Article 6(1)(3) of the new law from the perspective of Article 10bis of the Paris Convention and, by way of a comparison with the corresponding provisions of the Trademark Law, examines how the new law will redefine the legal landscape for protecting commercial signs in China.(2)
Article 6(1)(3) of the Anti-unfair Competition Law prohibits the unauthorised use of a website name, webpage or the main parts of a domain name with a certain level of influence. This ties in with IP legislation, which prohibits the use of goods or services with a certain level of influence in order to avoid misleading the public.
Notably, "misleading the public (or consumers)", which is the prerequisite to Article 58 of the Trademark Law, is generally deemed to be semantically equivalent to "misleading consumers to believe that its products are those of another person or induce a special relationship with another person" (an act of confusion under Article 6 of the Anti-unfair Competition Law).
Under Article 10bis(3)(1) of the Paris Convention, 'confusion' has a wide scope and includes "all acts of such a nature as to create confusion by any means whatever with the establishment, the goods, or the industrial or commercial activities, of a competitor".
Article 6(1)(3) explicitly grants protection to website names and webpages. In this Internet era, all sorts of independent websites – including the online stores of various e-commerce platforms, microblog and WeChat account names and app names – are covered by this sub-paragraph. Some of these names are associated with certain goods or services, whereas others refer generally to certain industrial or commercial activities without referencing any specific goods. Such activities may not necessarily lead to the misidentification of one party's products as those of another, but may induce a special relationship with another party.
In Pierre Fabre Dermo-Cosmetique v Changsha Hui Ji E-commerce Co, Ltd, the Changsha Intermediate Court found that Changsha Hui Ji E-commerce (a Chinese online mall operator which sold genuine goods) had committed an act of unfair competition by reproducing the style and layout of the official website of Pierre Fabre's brand Avène in an attempt to pass its website off as the official website.
A domain name is simply a network address. The registration or use of a domain name that may cause confusion constitutes an act of unfair competition under the Interpretation of the Supreme People's Court on the Application of Laws in the Trial of Civil Disputes over Domain Names of Computer Network.
Further, Article 1(3) of the Interpretation of the Supreme People's Court on Several Matters Regarding the Application of Law in Trial of Trademark Civil Dispute Cases (Judicial Interpretation on Trademark Civil Case) provides that where a domain name that is identical or similar to another party's registered trademark is used in e-commerce activities as the source identifier of relevant goods or services, such act constitutes trademark infringement.
For further information on this topic please contact Hui Huang or Paul Ranjard at Wanhuida Peksung by telephone (+86 10 6892 1000) or email (email@example.com or firstname.lastname@example.org). The Wanhuida Peksung website can be accessed at www.wanhuida.com and www.peksung.com.
(1) The countries of the Union are bound to assure to nationals of such countries effective protection against unfair competition.
(2) Any act of competition contrary to honest practices in industrial or commercial matters constitutes an act of unfair competition.
(3) The following in particular shall be prohibited:
1. all acts of such a nature as to create confusion by any means whatever with the establishment, the goods, or the industrial or commercial activities, of a competitor;
2. false allegations in the course of trade of such a nature as to discredit the establishment, the goods, or the industrial or commercial activities, of a competitor;
3. indications or allegations the use of which in the course of trade is liable to mislead the public as to the nature, the manufacturing process, the characteristics, the suitability for their purpose, or the quantity, of the goods.
(2) This update is part of a series that examine the new Anti-unfair Competition Law in view of Article 10bis of the Paris Convention and the Trademark Law. For previous updates in the series, please see:
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