Author Archives: yytbest

Is an “A+B” Combined Trademark Substantially Similar to a Separate “B” Trademark?

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(By Luo Yanjie) The Taiwan-based Yilan Food Industry Co., Ltd. (“Yilan”) is a well-known food manufacturing company, and owns the registered trademark “旺旺” (read as “Wang Wang” in Chinese) in several classes. Alibaba (China) Co., Ltd. (“Alibaba”) is a renowned e-commerce company based in Mainland China; it owns and maintains a subsidiary that develops and promotes its instant messaging software called “淘宝旺旺” (read literally as “Tao Bao Wang Wang” in Chinese). When Alibaba attempted to register the trademark for its software application, Yilan immediately filed a protest against it. In today’s post, we will concentrate primarily on this case. The main issue surrounding the case is relatively simple: a trademark can be considered a type of rare “resource” for its owner to make use of, and if in this case the trademark “旺旺” is already owned and registered by another entity, does it seem reasonable that a subsequent registrant simply attaches the prefix “淘宝” to it to avoid inevitable issues surrounding confusion as a result of the similarity of the two?

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Can A Subsequently Applied Trademark be Registered if the Owner of A Previously Registered Similar Trademark Does Not Oppose?

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Abstract: Approval from a reference trademark holder in supporting the registration of a subsequently registered similar trademark is one of the key elements taken into consideration by administrative organs and the People’s Court in deciding whether to grant trademark rights to the latter, based primarily on Article 28 of the Trademark Law.

(By Luo Yanjie) China’s Trademark Law adopts the “first to file” principle, and in general, when a later applied-for trademark appears to be substantially similar to a previously registered trademark, it will not be granted exclusive rights in the use of the mark. In the case introduced in this post, the latter applicant succeeded in its trademark application due to approval by a previously registered holder of a similar trademark. The details of the case are as follows:

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Could NetDragon’s Providing Plants vs Zombies 2 Be Protected under the Safe Harbor Principle?

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(By You Yunting) In recent days, Plants VS Zombies 2, the sequel to the global hit game Plants VS Zombies, came on the market in Apple’s AppStore in Australia. Afer initial release, millions of users downloaded the app from the Australia store. In China, however, the situation is quite different. As reported by the media, within the first 24 hours of the game’s release, many unlocked versions of the application were uploaded to third party media providers, like ZS91.com, and that the encrypted in-game items had been cracked.

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Why Trademark “K” Failed in Its Application?

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Abstract:

(By Luo Yanjie) China trademark application procedure follows the principle of “first application,” but when two trademarks are substantially similar, a subsequent  trademark could be considered as distinctive as the previously registered one through a sound reputation among consumers; taking this into account, and the possibility that such reputation may well differentiate a subsequent trademark substantially similar to a previously registered one causes one to consider whether such reputation would be worthy of the granting of trademark rights and protection.

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Why China Court Protects Violation Against GPL License Agreement?

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(By You Yunting) We could find no regulation in China’s Copyright Law and Regulation on the Protection of Computer Software with regard to the open source software. In a dispute judged by Haidian People’s Court in the 1st instance and Beijing No.1 Intermediate People’s Court in the 2nd instance, though both courts determined the validity of the open source agreement, they supported those violating the GNU GPL as failed in disclosing newly added source code could claim the copyright over the new work. To our understanding, the case, on the  one hand, had showed the pragmatism of China courts, and on the other hand, it also demonstrated that the open source software organization is necessarily to be seen in the right protection on the OSS software.

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Shanghai Court Promulgated New Rules on Service Invention Remuneration and Reward

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(By Albert Chen)  Recently, the Shanghai Higher People’s Court (the “Higher Court”) issued the Guidelines on the Trial of Employment Remuneration and Reward for the Inventor and Designer (the “Guidelines”), which has further provided the issues involving the standard of the remuneration and reward as well as their payment. In today’s post, the author would like to interpret the new regulations in the Guidelines.

I. The standard of the service invention remuneration

According to the Guidelines, the remuneration for the service invention shall not be less than RMB 3,000 and not less than RMB 1,000 for  design patent and utility model.

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In Selling Train Ticket Insurance, Why Did JD.com Deliberately Break the Unfair Competition Law?

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Abstract:

(By You Yunting) The greed of JD.com and Ctrip.com (NASDAQ: CTRP) has been fully revealed, for they have added insurance fees as a compulsory sale with its train ticket offerings. In reality, all JD and Ctrip want to do is become engaged in the huge amount of train ticket transactions that take place every year in China, yet not be restricted by the statutorily imposed agency fee of up to RMB five Yuan. Clearly, it is plain to see that these two parties have sold insurance tacked onto ticket agency train tickets as a means of gaining even more profit. However, such a strategy could be considered entirely invalid, and in addition likely in violation of the Unfair Competition Law due to its chasing of illegal profits through such sales.

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Does a Previously Registered Noted Trademark Influence Subsequently Registered Similar Trademarks?

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Abstract

(By Luo Yanjie) In determining the similarity of two trademarks, one must take into account the common understanding among the public as to the trademark and the goods it presents (as well as the source), and the public’s comprehension of the words, pictures, designs, or a combination of all of the above. Concurrently, however, the reputation of the trademark must be taken into consideration in order to determine whether the above factors would lead to confusion as to source among the relevant consumers and market. Generally, trademarks are judged by their similarity with the appearance of another trademark; however, in the following described case, the second instance court also considered the reputation of the reference trademark and the understanding of the consumer in relation to a more comprehensive protection of a well-known brand. The significance of the case is primarily that, due to the millions of trademark applications made in China each year, even subsequently registered trademarks that are incredibly similar to those previously registered may be approved for commercial use by the China Trademark Office, due to strained and restricted resources on its part. In any case, the trademark involved in this case is a well-known one, and for this reason, the court decided that the subsequently registered mark would not be approved for use.

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Litigation in China: A Long and Rocky Road

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(By Dr. Wenbao Qiao) For foreign companies doing business in China, disputes and litigation may sometimes be inevitable. Once a dispute cannot be resolved out of court, there is a long and rocky road to the final success, with several important points to be considered for the planning and handling of litigation in China: 

Documents and Evidence 

The first step of each procedure is to collect and prepare all necessary documents and evidence. According to Chinese law, documents and evidence from another country (such as excerpts from the commercial register or powers of attorney) have to first be notarized in their country of origin and then certified by the Chinese Embassy or Consulate in the respective country. Only notarized and certified documents and evidence will be accepted by Chinese courts. While preparing the documents and evidence, attention should be paid to the timeline required for notarization and certification. There are several important statutory deadlines shown below. Failure to meet these deadlines can lead to the loss of a case. Notarization and certification in Germany usually takes two to three weeks, which in turn may play a critical role for the scheduling of time in preparation for trial.

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China’s Latest Laws and Regulations in June 2013, II

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V. The State Council Has Issued Amended Regulations on the Administration of Foreign-Funded Insurance Companies.

On June 8, 2013, the State Council issued amended Regulations on the Administration of Foreign-Funded Insurance Companies (Order No. 336), which will take effect on August 1, 2013. The amendments are comprised of two paragraphs. The first paragraph of Article 7 has been revised to “the minimum amount of registered capital of a joint venture and wholly foreign invested insurance company is RMB twenty million or convertible currency in equivalent.” The second paragraph of Article 7 has been revised to read, “a foreign-funded insurance company shall allot no less than RMB twenty million of working capital to its branch.” The regulation of “contribution of a foreign-funded insurance company shall be convertible currency” is deleted.

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Could Apple Get Trademark “iWatch” in the Mainland China?

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(By You Yunting) The author would first like to apologyze, that as mentioned in the previous post “Why Did Apple Filed the First “iWatch” Trademark In Jamaica?”:

“For the prospect of iWatch application in mainland China… the author would like to stop here, and I will resume the discussion over this issue in tomorrow’s post.”

Yet due to work obligations, the author broke his promise. For the make-up, the author took an early raise this morning to continue his analysis on the issue.  First, the author’s conclusion of the issue is: despite the obstacles of iWatch acquisition, it would not prevent Apple from gaining it.

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Why Did Apple Filed the First “iWatch” Trademark In Jamaica?

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(By You Yunting) According to media reports, Apple Inc. (“Apple”) has filed for “iWatch” trademark in several countries and regions, including: Japan, Mexico, Russia and Taiwan. Searching the trademark database in mainland China and Taiwan, the author discovered that Apple filed its iWatch trademark in Taiwan in June 2013.As for the trademark application in mainland China, because it takes a longer period of time for trademark application to be recorded on China Trademark Office’s website, we could only check the information concerning applications made several months ago. Therefore, if Apple filed the application in early June, then we would have no way to confirm it right now. Furthermore, we have found no records regarding Apple’s iWatch trademark application in China. The following are information of Apple’s “iWatch” trademark application in Taiwan:

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China’s Latest Laws and Regulations: June 2013, Part I

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I. The State Administration of Taxation Issued a Notice Concerning Issues Related to Declaration of Tax Rebate (Exemption) for Exported Goods by Exporting Enterprises.

Recently, the State Administration of Taxation issued a Notice Concerning Issues Related to the Provision of Proceeds for Declaration of Tax Rebate (Exemption) of Exported Goods by Exporting Enterprises, which clarifies the policy for declaration of value-added tax rebate (exemption) of exported goods by exporting enterprises. The Notice will take into effect on August 1, 2013. At the same time, the State Administration of Taxation also announced the policy interpretation for the notice.

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Why Did the Supreme People’s Court Changed Its Attitude towards Revoking Trademarks When It Is Unused for 3 Years

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(By You Yunting) China is a heavily administrated and controlled country. If administrative approval is not obtained, business activity such as producing and selling of Alcoholic beverages, medicine, etc.,  could be ruled to be invalid by the court. According to the Trademark Law of China, once the trademark has not been used for three continuous years, it could be eliminated. There is a significant amount of people who uses their right to their trademark however, many people fail to obtain the proper administrative approval or violates administrative rules. This brings us to the issue of  whether or not such a trademark should be removed even though it has been used. For this kind of cases, we find an example in the 10 annual cases of 2011 promulgated by the Supreme People’s Court of China. In that case, the Supreme Court overturned its opinions expressed in the previous year, “Kangwang Trademark Dispute”, in which the court determined that despite a shortage of administrative approval, the using of the trademark is sufficient according to the Trademark Law. 

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