Category Archives: Trademark

WeChat Trademark And Tencent’ s Problem in Trademark Management

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(By You Yunting) In recent, several medias have interviewed the author on the squatting of “微信” trademark, which is the name of a LBS software of Tencent Inc. (the “Tencent”), and the English name of it is WeChat. The story of it is: A company admitted in Beijing (the “Beijing Company”) made its trademark application of “微信” in Class 38 on 17th January of 2011. Tencent, who runs WeChat (“微信”) software, made its own application several a week later on 24th. For the first application principle, Tencent’s application has been refused by the authority. And part of Beijing Company’s application has also been refused, while part of it was opposed. Currently, WeChat (“微信”), the hit product of Tencent, is with no any records in Class 38, which is the most related class for the app.

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How to Complain Infringement on Taobao.com after It Moved out of “Notorious Markets” List

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(By Albert Chen & Huang Mengren) As said in a news report, the trade representative recently announced Taobao.com is removed from US notorious market list, and that could be contributed to Taobao.com’s effort in the last year, including the cleaning up on the website under the cooperation with the right holders and the industry association.

Really, in the last year, we have noticed the endeavor from Taobao.com. The website has executed a MEMO with MPAA, Motion Picture Association of America, to combat any illegal sales of the works registered in MPAA. And also we have seen the it launched the system of spot check over all the products sold on it, the IPR protection platform, and the amendment on IPR articles in Taobao Rules in accordance with its experience on IPR protection and the trend of the market.

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All General Vocabulary Cannot Be Registered As Trademarks in China?

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(By Luo Yanjie) Early in this year, JDB Inc., the famous herbal tea manufacturer argued with Guangzhou Pharmaceutical Company (the “GPC”) regarding ownership of the Wang Lao Ji trademark, which concluded in JDB being ordered to cease its use of the trademark. Now, JDB has begun its second battle with GPC, this time accusing GPC of infringeing the trademark “Ji Qing Shi Fen (吉庆时分).” Wanglaoji Health Industry Co. Ltd. (Guangzhou Wanglaoji Company) affiliated with GPC, recently made a statement that the State Trademark Office had accepted its application to revoke the registration of “Ji Qing Shi Fen (吉庆时分)”, the main reason being that the mark is considered generic in the sense that it is vocabulary in common use. Due to this, the State Trademark Office further advocated that it is uncertain whether there can be any exclusive right in the use of the registered mark.

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Why Nippon Lost Its Lawsuit against Trademark Infringement by Taobao Sellers?

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(By Luo Yanjie)In March 2011 the globally well-known paint producer Nippon Paint Co. Ltd. (“Nippon”), discovered Zhanjin Company had set up a shop on Taobao.com, the biggest online market in China, and had been using Nippon trademarks, ads and trade dress concerning Nippon products with no approval or license from it. With no reply from Taobao.com after filing a complaint, Nippon sued Zhanjin and Taobao in court, and yet the complaint was rejected by the judge. Dissatisfied with this result, Nippon made an appeal to the Shanghai No.1 Intermediate People’s Court, who ruled that the adoption of Nippon’s trademark by Zhanjin is for product information display only, and it could lead to no likelihood of confusion among the public. In addition, the court ruled that no commercial interests of the plaintiff would be damaged. Based on these rulings, the alleged trademark infringement claim could not be established, and therefore the original decision was maintained.

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How Large Is the Scope of Protection for Well-Known Trademarks in China? (II)

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In yesterday’s post, we introduced trans-class protection for well-known trademarks and the factors that might lead to this status being granted. Today, we would like to conclude by explaining situations in which well-known trademarks will not be granted trans-class protection.

III. Situations where trans-class protection will not be granted to well-known trademarks

As discussed above, well-known trademarks only enjoy trans-class protection when meeting the following conditions. Now, we will introduce some common situations where trans-class protection cannot be achieved:

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How Large Is the Scope of Protection for Well-Known Trademarks in China? (I)

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 (By Luo Yanjie) Henan Dazhong Paint (Hongkong) Co., Ltd (“Paint Company”), a manufacturer of varnish and paint, recently applied for the trademark “多美滋,” which attracted the dissatisfaction of the International Nutrition Company (“INC”), a globally known Danish infant and children’s nutrition company and the trademark holder of “多美滋DUMEX.” As a result, INC filed an objection to the State Trademark Office (“Office”), but the objection and objection review were both refused by the Office and the Trademark Review and Adjudication Board (“TRAB”). After that, INC appealed TRAB’s decision to the Beijing No.1 Intermediate People’s Court. Recently, the Court made its decision and found that “the adoption of the trademark on the paint product could influence the interests of the plaintiff.” Based on this decision, the Court revoked TRAB’s decision to approve the registration of the trademark “多美滋” for paint.

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How to Legally and Properly License Trademarks in China ?

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The trademark license, as one of the means of using trademarks, has, in practice, encountered many unexpected disputes due to illegal and improper use. How then should one legally and properly license trademarks? And, what may benefits will the rights holder gain after going through the administrative procedures? This essay summarizes the author’s opinions on these issues.

I. How to make the trademark license record

(By Albert Chen) According to the Measures for Recording Trademark Licensing Contracts (“Measures”), the rights holder, either the owner of the trademark or the licensee, or the trademark agency representing these parties shall apply for recordation of the trademark license. If the licensors are foreigners or foreign companies, however, the record must be handled by trademark agencies. In the application, the applicant shall submit the licensing contract recordation application, a duplicate of the licensing contract, and a copy of the trademark certificate. If the documents are in foreign languages, translation shall also be provided.

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Could Nike Get the Trademark “Liuxiang”?

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(By Luo Yanjie) Recently, the lawsuit filed by Nike against China’s Trademark Review and Adjudication Board (“TRAB”) (note: the link is in Chinese) was heard in the Beijing No. 1 Intermediate People’s Court. The case was brought because TRAB refused Nike’s application to trademark Liu Xiang (刘翔) for the reason that the trademark had been registered by another company twenty six years ago, namely in July of 1986. At that time, a company named Shanghai Liuxiang Company applied for the trademark Liu Xiang Brand (刘翔牌) in the class of clothing, and the exclusive period for the use of that mark will last until 2017. Incidentally, the Liu Xiang Brand trademark happens to have the same name as the famous Chinese athlete, Liu Xiang. The case is currently being heard, but the author believes Nike has little chance of winning the case. Today’s will examine the issues involved in this case.

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How Companies in China Apply for Reserve Trademarks and Defensive Trademarks?

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(By Luo Yanjie) A reporter from China Industry & Commerce News asked the author how companies should apply for reserve trademarks and defensive trademarks. The interview is as follows:

1. How to decide between the registration of a reserve or defensive trademark?

Reserve trademarks are prepared for coming new business. Because the period from application to reservation requires one year, it is suggested to prepare some spare names for new products or services being prepared or under research and development. Then, before the product is released, the company can directly select and use a name it has already registered. Generally, it is only necessary to apply for the classes the company intends to adopt, and there is no need to register many other related classes.

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How to Acquire the Trademarks of Companies Whose Business Have Been Canceled or Whose Licenses Have Been Revoked in China?

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By Albert Chen

Trademark assignees may sometimes encounter an awkward situation: the target trademark is in the hands of a company that has had its business license revoked or that has been cancelled. Although the trademark is still valid, others seem to have no legitimate means to acquire it. So, under these circumstances, does the assignee really have no means to acquire the trademark? In today’s post, you will find the answer.

I. Why would trademarks be left unused?

According to relevant statistics, the average life of Chinese companies is seven years, and the average of life of privately owned companies is only 2.9 years. On the other hand, however, the validity period of a trademark is ten years, and there is nothing in Chinese law that states that the trademark shall automatically become invalid when the business license of its holder is revoked or the company is cancelled. Especially when the business license has been revoked, the company still has legal capacity. It is merely incapable of conducting civil acts, including the use and transfer of trademarks, because its business license or chop has been announced invalid or has been confiscated under the punishment of business license revocation.

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What Geographical Names Can be Registered As Trademarks in China?

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It is reported that (Note: the link is in Chinese) Wakayama County of Japan recently announced that the trademark application for “Ji Zhou” (纪州) filed by a Hong Kong company on the Chinese mainland concerns a publicly well-know geographical name. The County has also filed an objection with the Chinese Trademark Office because this name is not appropriate to serve as a trademark. The report also stated that Wakayama County has been paying close attention to trademark applications in China since 2010 and has already had two objections granted against trademark applications for “Wakayama.” Today, we would like to discuss whether geographical names can be registered as trademarks:

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Does Chinese Trademark Law Permit the Coexistence of Identical or Similar Trademarks?

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Last year, the Supreme People’s Court issued the final decision in the protracted dispute between LACOSTE and CARTELO. The decision clarifies cases involving long brand history and could guide future hearings on similar disputes in courts of all levels. In the decision, LACOSTE lost the lawsuit, and no infringement was found on the part of CARTELO. In the judgment, the Court took the first steps towards establishing a system of “trademark coexistence,” which means the coexistence of similar trademarks in the same class, for use in China’s trademark cases. Today’s post will provide an analysis of the application of this system in China.

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An International Trade Dispute with Trademark Parallel Import Involved

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By Lear Gong

The author recently handled a lawsuit involving trademark parallel import. The case itself was not complicated: a famous American bedding design company (“US Company”) holds trademark A in both China and Japan. The US Company licensed a Shanghai home furnishing company (“Shanghai Company”) to manufacture and sell products marked with trademark A within the territory of mainland China. A Japanese home furnishing company (“Japanese Company”) offered to import trademark A furniture from China to Japan, but demanded a written license from US Company. With the promise from the Shanghai Company, the parties concluded a sales contract, but the clause on the Shanghai Company’s duty to get a license from US Company was not clear. From the time the contract was concluded until the products were delivered, the Japanese Company always urged the Shanghai Company to present it the certificate of license issued by the US Company, but the Shanghai Company did not reply or present the certificate. The Japanese Company moved to terminate the sales contract based on failure to perform. The Shanghai Company then filed a lawsuit against the Japanese Company demanding that it continue performance of the sales contract.

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The Judicial Jurisdiction of Network Infringement in China

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By Albert Chen

In the post Could Apple Use Objection to Jurisdiction to Prolong the Litigation Period?, we introduced the objection to jurisdiction Apple submitted to the Beijing Second Intermediate Court after it was sued by the China Writers Alliance over downloads in Apple’s App Store. In China, the infringement or tort cases shall be brought to the court of infringement place or the domicile of the defendant, and the infringement place may include the place where the infringement takes place or the place where the consequences of the infringement are felt. With regard to network infringement, could the place where the consequence of infringement is felt include any computer terminal? Today, we will introduce the relevant system.

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