Shall Quantities of Malicious Registration Be Improper Means in China Trademark Law?

(By Wang Ting) In China, the Trademark Law applies the Principle of First Filing and when the Trademark Office reviews these applications, they usually examine whether there are prior applications or registrations existed, but not the intentions of filing such prior registrations. It means they don’t consider the bad faith during trademark registration procedure. Many foreign companies have applied and obtained the trademarks for their own products and services at the beginning. However, as so-called villains can always outsmart, besides the malicious registrations of others’ un-registered trademarks, there are lots of cases in which the trademark squatters register the well-known or popular trademarks on different goods or services. Thus foreign companies suffered from such consequences. Today, in our introduced case, we are going to discuss about the situations that the acts of malicious registrations under different classes are finally determined as improper means as stipulated in the Trademark Law.

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Why Does Shanghai Court Dismiss a Non-use-Oriented Trademark Register in Malicious Lawsuit?

(By Yue Mengyan) There are many applicants who register a tremendous number of trademarks without the use-oriented purpose. Moreover, they register trademarks on obvious malicious purpose. In such situation, their enforcement for trademark protection shall be limited and their claims for compensation against trademark infringement may not be favored by the court.

Case Introduction

Appellant (Plaintiff at the first instance): Guangzhou Zhinanzhen Exhibition Service Co., Ltd. (the “ZHINANZHEN”)

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Could Coexistence Agreement Be Accepted in Trademark Application in China?

(By Yue Mengyan) Pursuant to China trademark laws and regulations, if certain trademarks have been already registered for certain goods, applicants cannot apply for such same or similar trademarks for any same or similar products. However, if the trademark coexistence agreement is made by the right holder of prior registered trademark and applicant of an identical or similar trademark without interfering in each other’s interests, then it is possible for the applicant to successfully obtain the approval of such application.

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Why Does China Court Order New Balance a High Amount Compensation of RMB 98 Million for Trademark Infringement?

(By Luo Yanjie) Recently, Guangzhou Intermediate People’s Court ordered New Balance Trading (China) Co., Ltd, an affiliate of US-based Sports footwear manufacturer New Balance, to compensate a Chinese shoes owner, Zhou Yuelun, with a rarely high amount of RMB 98 million for infringing his Chinese “新百伦” trademark, a Chinese transliteration from English word New Balance, in the first instance. Such high amount of compensation is unusual in China intellectual property infringement. It is for this reason that this case attracted extensive attention. Upon the public records, from the legal view, we will briefly introduce and analyze this case in today’s post.

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Could Co-Founder Rush-Register A Planning Trademark As His Own?

lehmanbrown

 (By Luo Yanjie) Article 15 of both the 2014 version and the 2001 version of the Trademark Law stipulated that an agent shall not rush-register trademarks of the principal or the represented. In practice, Article 15 is always used to prevent from rush-registration. The following judgment will introduce a typical rush-registration case with new ideas for reference.

 Introduction to the Case:

Re-appellant (plaintiff at first instance, appellant at second instance): LEHMANBROWN LIMITED (the “HK Company”)

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China Supreme Court Approved Passive Use as the Use of Trademark

(By Luo Yanjie) Trademark is to distinguish the goods and services from different trademark owners. However, if the public voluntarily called it another name and made use of it, then does such use still constituted the use of trademark as regulated in the Trademark Law. If you want to know more, please read the next posts.

Introduction to the Case:

Re-appellant (third party at first instance and appellant at second instance): Gui Pufang

Re-respondent (plaintiff at first instance and respondent at second instance): Guangdong Tea Imp. & Exp. Co. Ltd (the “GDT”)

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Why Did Using a Literal Meaning of “智慧背囊” be Judged Trademark Infringement?

送给青少年的智慧背囊

(By You Yunting) Introduction to the Case:

Appellant (1st defendant at first instance): Qingdao Publishing House

Respondent (plaintiff at first instance): Shandong Shiji Tianhong Education Technology Co., Ltd (the “Tianhong Education”)

2nd Defendant at first instance: Beijing Readbuy Tianxia Information and Technology Co., Ltd (the “Readbuy”)

Court of first instance: Beijing Fengtai District People’s Court No.: (2014)丰民初字第03829号

Court of second instance: Beijing No.2 Intermediate People’s Court No.: (2014)二中民(知)终字第10356号

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Bruce Lee’s Daughter Won Trademark Opposition for the Chinese Name of the late Bruce Lee

(By Luo Yanjie) The most common trademark squatting is to register celebrity names as trademarks in China. In following post, we will introduce a case regarding where the court rejected the rush-registered trademark via the use of late celebrity names. Bruce Lee, with his Chinese name 李小龍, was a late Hong Kong American martial artist, Hong Kong action film actor, martial instructor, filmmaker and the founder of Jeet Kune Do. The descendants of the late Bruce Lee set up a Bruce Lee Enterprise, LLC in the operation of related matters to the late Bruce Lee.

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Are Enterprises Entitled to the Rights for Its Prior Enterprise Name?

(By Wang Ting and You Yunting) In enterprise name registration, if an enterprise changed its enterprise name at once, generally the new enterprise name is under protection. This means, the enterprise is no longer entitled to the rights and interests of its prior enterprise name. Such being the case, does another’s registration on the prior enterprise name cause its prior rights, or violate the Article 32 of the Trademark Law on the stipulation that the trademark application shall not infringe upon another party’s prior existing rights? Is the enterprise with a new enterprise name entitled to the prior right for its prior rights? In today’s post, with regard to those questions, the Trademark Office, the Trademark Review and Adjudication Board, Beijing No.1 Intermediate People’s Court and Beijing Higher Peoples Court were divided in their attitude.

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Could JD.com Make the Alibaba’s Registered “双十一” Trademark Invalid?

京东

(By You Yunting) According to the news, Alibaba Group, an Chinese e-commerce that provides consumer-to-consumer business-to-consumer and business-to-business sales services via web portals, has already obtained the registration of the trademark “双十一” (meaning “double 11”, actually the date of November 11th) (the “disputed trademark”) and authorized its affiliated Tmall.com to the  exclusive use of the disputed trademark. Moreover, Alibaba delivered letters to various news media arguing that the JD.com’s use of “双十一” infringed the rights of its trademark. However, JD.com, one of the largest B2C online retailers in China by transaction volume, replied that the date of “November 11th” has already became a shopping day for all retailers and Alibaba’s registration on the “双十一” is accused of having the monopoly. Actually, Sunning Appliance, Gome and Amazon have suffered such impacts as well as JD.com.

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Analysis on New Provision of Agent’s Trademark Rush-Registration in China Trademark Law

(By Luo Yanjie) According to the latest news report, more than 14 millions of trademark applications in China have already been filed by June 2014. It indicates that Chinese economy develops very fast and also that brands across China and even all over the world, big or small, are attempting to the protection of trademark registration in China. However, there is no doubt that some trademarks were registered with bad faith at the beginning, i.e., pirate trademark rush-registrations. Among those trademark rush-registrations, some of rush-registrars are connected to the original holders, thus leading to prevention from agent’s trademark rush-registration as regulated in Article 15 of the Trademark Law (2001 version). Furthermore, in the newly applicable Trademark Law from May 2014, legislature departments made implementation on the Article 15. In today’s post, we will discuss the modification and its application.

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China Court Affirmed the Exception for Registration of Geographical Name Trademark

Munich Re Group

 (By Luo Yanjie) According to the Trademark Law, the geographical names of administrative divisions at or above the county level, and foreign geographical names well-known to the public shall not be used as trademarks, except for geographical names that have other meanings or are not geographically-oriented. However, under certain circumstances, geographical trademarks shall, if they are of sufficient distinctiveness as a whole, may be considered to have the requisite requirements of distinctiveness. In today’s post, we will introduce such a typical case for our readers.

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Why Tudou.com Failed to Apply for Tudou trademark under Class 41?

tudou

(By You Yunting) Tudou.com (NASDAQ:TUDO) are connected with trademarks in different kinds of services relating entertainments under Class 41. However, Tudou.com failed to apply for its website name as a trademark by virtue of previous similar trademark. Tudou.com is focusing on providing services of video-sharing and video on-demand, but we found out its major services cannot be applied for trademark protection. Therefore, how to deal with this trademark application puts forward higher requests for trademark lawyers. In today’s post, we will introduce this case and discuss the comments in the following.

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Alert: SoundCloud, Ubuntu and Lots of Famous Brands are being Rush-Registered as Trademarks in China !

(By You Yunting) Recently, a news article sparked concern that the Qihu Investment Co., Ltd (a similar Chinese name to Qihoo 360 Technology Co., Ltd) had rushed-registered hundreds of trademarks belonging to internet venture companies. Even though Qihoo 360 Technology Co., Ltd later clarified that it had nothing with the Qihu Investment Co., Ltd, the news still attracted attention from both companies and lawyers.

Many famous companies’ brands, such as Ubuntu, Hotel Tonight and SoundCloud were being rush-registered as trademarks and some have even entered into the process of announcement by the Chinese Trademark Office after a preliminary examination and within three months of the date of the publication. The overseas companies may lose the exclusive right of trademark in China unless they file an opposition against these rush-registrations. Worse, they will not be able to use these brands they have created when entering the Chinese market for a significant length of time. In today’s post, we would like to address how venture companies should resolve trademark squatting.

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