(By Luo Yanjie) Abstract: China’s new Trademark Law still enforces the principle of “first to file,” but at the same time a prior user of a trademark only need prove to some extent that their prior use of a registered trademark had a degree of popularity, and need not prove that a subsequent user of the trademark “squatted” the trademark by registering it. If the board approves such prior use, the prior user will have the right to continue using the trademark in the original scope of use. “Improper means” as stated in Article 31 of the Trademark Law, refers to situations “where the applicant knows or should have known that the trademark had been used by others with a certain degree of influence, and preemptively registered the same, then such applicant shall be determined to have used improper means to register the mark.”
(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?
(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:
(By You Yunting) Recently, Mr. Shi Yuzhu, the senior executive of Giant Inc. has once again entered the flurry of public opinion. The main reason is that he claimed on his Weibo that the company has applied for 屌丝 as a trademark, and he also joked that anyone using the term must pay the company one yuan. (屌丝 (diaosi) means pubic hair in Chinese, but it has been used on the internet to popularly refer to losers). Curious about Mr. Shi’s words, the author checked the Trademark Office’s database for the application for 屌丝 in classes concerning online games. Perhaps because the application was filed recently, there is no indication of Giant Inc.’s application in the database. But, the author also found that Giant’s opponent, Suzhou Woniu Company, has applied for the trademark 屌丝侠 in Classes 9, 38, 41, and 42 on May of 2012, and all of these application are related to online games.
(By Albert Chen) In yesterday’s post, we analyzed why Tencent would confront with the trademark squatting, and mainly blamed it for the defect on the internal management. Today, we would continue our discussion, and share our opinions on how could Tencent take back or stop the first application by others.
Before the end of this year, no one would oppose “iPad battle” shall be the trademark dispute of the year, and yet with the breaking out of conflict on the trademark of “微信”, a LBS software from Tencent Inc. (the “Tencent”) and its English name is WeChat, that affirmation would be challenged.
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:
The SINO-RUSSIA PPH program will start from this 1st July, this program is similar to those of SINO-USA and SINO-JAPAN. And the following is our past essay on the PPH program between China and other countries.
The Patent Prosecution Highway is Piloting in China
—introduction on PPH programs between China and USA, Japan
Recently, China government has speeded up the process of international patent cooperation. Currently, the Patent Prosecution Highway (PPH) Program between China and several other countries has started or prepared to start. Among the cooperations, the Sino-Japan PPH is piloting from 1st November, 2011, the Sino-America PPH will be carried out on 1st December, 2011, and Sino-Korea program will start from March, 2012.
By the news released on the website of the State Intellectual Property Office (SIPO), the PPH respectively between China and Japan, USA, Germany, South Korea has been launched for a test run of 1 year.
Then what is PPH? What benefit may company gain from it in the patent layout? DeBund Law Offices, the mother institution of our website, is qualified as the patent agency institution. Today, we invite Mr. Gao Shaoyi, who once worked in Huawei as the patent engineer to share us his understanding on the PPH sysem.