Although it has not been officially admitted operating in China, Facebook, the social networking service giant, is carrying its trademark plan in China when Apple is trapped in the iPad mark battle in the country, By some reports (note: the link is in English), Facebook has applied for more than 60 marks in Chinese or English, and accordingly, Bridge IP Law Commentary retrieved the application and the following is our analysis made herein. (the image above is screenshot of Facebook)

 

 

I. the trademark application of Facebook in China

Class 9: software, class 25: clothing, class: ads, class 36: finance, class 38: telecommunication, internet communication, class 41: education, class 42: software and hardware service of PC, class 45: social service

Both “脸书” and “面书” are the translation of Facebook in Chinese, and “飞书博” is the homophic translation of the website.

II. Analysis on the applied classes by Facebook

Facebook is a global-known social networking website, and by the existing classes, its services could be categorized in different classes. Therefore, the recent application by the company has covered almost all the related classes. As listed in the above form, in addition to the main corresponding class of Facebook’s business, Class 25 of clothing is also applied, which indicates that the company has been fully conscious of any possible free-riding on its trademark’ s reputation. According to our knowledge, the most applied field of the well-known trademark is the manufacturer of clothing and stationery. Therefore Class 16 of stationery shall also be covered.

Moreover, we suggest Facebook to register the trademark in Class 18 of feather products, Class 28 of toy, Class 26 of ornaments and Class 30 of food, which fields are all easy to be infringed. And also to take cautions against any possible infringement in such fields is necessary to noted companies like Facebook.

III. the analysis on the applied content by Facebook

The applied trademark by Facebook includes not only those in English but also the ones in Chinese, like “脸书”. Actually, the most widely spread localized name of Facebook is the phrase of “非死不可”, which means no possibility to survive, while for its threatening and violent meaning, such names could not be registered as the trademark by China Trademark Law.

We understand that few foreign companies would put attention on the localized trademark of its existing sign before entering the Chinese market, which may hinder the propaganda of its localized brand due to others squatting. But, Facebook’s application shows that foreign investors have realized the importance of the brand localization. For this reason, any investors aiming at global introduction of its brand shall follow Facebook to register the localized trademark as soon as possible.

IV. Facebook shall initiate cancellation procedure against the squatted marks

We have found that the trademark of Facebook has been first applied in Class 9 by other companies, which by our opinion, Facebook could take back the trademark through judicial ways in the class. For any squatted trademark, the relief procedure of the trademark as regulated by China laws is available to foreign investors other than the trademark purchase as adopted by Apple.

The 1^st relief way is the unregistered well-known trademark. Generally, the squatted mark is reputed to some extent, and its first user may claim the trademark to be examined as the well-known trademark, which by China Trademark Law could combat any registered identical or similar trademarks in the same class. The 2^nd method is to apply for the cancellation on those trademarks unused for consecutive three years. Most squatters will not use the applied marks, for they intend to sell the sign with a high price. And by the existing laws, once a trademark is not used for consecutive three years, the trademark user could apply for the cancellation of the mark. In a word, the trademark squatting does not necessarily mean the loss of the trademark.

V. no necessity to apply for the wireless address（无线网址）, internet keyword （通用网址） and Chinese domain name（中文域名）

It’s further reported (note: the link is in Chinese) that Facebook has also applied for the internet keyword, and as similar to such internet keyword, there are also the wireless address and Chinese domain name, which are all the domain name service provided by CNNIC for the English domain name to be switched to Chinese ones.

We think there’s no necessity to apply for such domain names for most netizens in China has no habit to use the service or to type Chinese internet addresses. Furthermore, most browsers used in China could not support Chinese address typing, which relayed service may soon vanish according to the current trend. After all, it’s even a stepped field for squatters.

Other recommended posts on our website:
1. The Actual Term of Trademark Registration in China
2. How to Apply for the Trademark Record in China Custom
3. How to improve the success rate of trademark registration in China?
4. Matters for Attention in Trademark Refusal Review in China
5. Introduction of China’s Legal System of Trademark Renewal
6. Introduction on the Regulations concerning the Capital Contribution in IPR or Domain Name in China
7. The Copyright Registration in China Could Be FREE?
8. China Copyright Protection Term Longer than EU’s?
9. Matters for Attention in the Patent Preliminary Injunction Application in China(I)

Author: Mr. Luo Yanjie
Attorney-at-law of DeBund Law Offices
Co-author: Mr. You Yunting
Founder & Editor-in-Chief of Bridge IP Law Commentary
Partner & Attorney-at-law of Shanghai DeBund Law Offices
Email: Bridge@chinaiplawyer.com, Tel: 8621-5213-4900,
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Bridge IP Law Commentary is a website focus on the introduction of commercial laws in China, especially the intellectual property laws. All the posts here are our original works. And all news or cases referred here are from public reports, and our comments or analysis are of due diligence, neutrality and impartiality, representing our own opinions only and are our original works. You may contact us shall you have any opinions or suggestions.

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