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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Does the “GAP Underwear” Trademark Have Adverse Effect by Its Name?  

(By Luo Yanjie) Trademark Office (the “CTMO”) has been increasingly tightened its standards on trademark reviewing and claiming that the trademark itself may cause “adverse effect”. Competent authorities are more than inclined to use such grounds indiscriminately by treating it as an all-purpose shield to deal with distinct situations. Recently, the Supreme People’s Court remedied such phenomenon by making its decision on the GAP Underwear’s cases. The following is our detailed introduction:

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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 Qunar.com be Entitled to Cancel Competitor’s domain name of Quna.com?

去哪儿

(By Luo Yanjie) Generally, enterprises are always using the application of trademarks to protect their brands, but because of the strict trademark review and long review periods, sometimes enterprises could not obtain the approval of trademark registration. Even so, with regard to their famous goods, enterprises could rely on the Anti-Unfair Competition Law to protect their rights and interests. In today’s post, we will introduce and share a typical case with readers.

Introduction to the Case:

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Supreme Court Determined Trademark Non-infringement for Using Prior Enterprise Name with Good Faith

(By Luo Yanjie) Both the enterprise name and the trademark distinguish the sources of goods or services, so that in practice they may conflict with each other. However, trademark, an exclusive right, has functions so as to prohibit others from using it as enterprise name. Under some circumstances, the enterprise name can coexist with the trademark. In today’s post, we would like to introduce such a case.

Introduction to the Case:

Retrial Applicant (Plaintiff at first instance, appellant at second instance): Yinchuan Buma Trading Co., Ltd (the “Yinchuan Buma Trading”)

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P&G vs. Vidal Sassoon Hairs School’s Judgment Abstract

p&g

(By Luo Yanjie) An enterprise name attempting to use a well-known trademark is quite the norm in China. In today’s post, we would like to introduce a typical case where the courts made a final judgment that the infringer constitutes infringement but does not change its enterprise name. However, the judgment is far from playing its role in the containment of this violation.

Introduction to the Case:

Appellant (Defendant at the first instance): Beijing Royal VIDAL SASSOON Beauty Hair School (the “Royal School”)

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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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Could A Prior User Constitute Trademark Infringement against the Exclusive Right Holder of a Registered Trademark?

caidiexuan

(By Luo Yanjie) Our former trademark laws had not yet stipulated whether a prior user constituted trademark infringement against the exclusive right holder of a registered trademark. However, the implementation of the update Trademark Law this year solved the problem. In today’s post, we will introduce a typical case concerning the prior user succeeded in competing against the exclusive right holder. Even though the case was judged before the implementation of the update Trademark Law, its judgment was kept pace with legislative purpose of the update Trademark Law.

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