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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Unilever Defeats Squatting of POND’S Trademark in China

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(By Luo Yanjie) Today we will introduce a typical example of a trademark squatting case. Unilever recently succeeded in defeating trademark squatting after it undertook a nine year objection to prevent a similar trademark from being registered under a different class.

Case introduction:

On May 28, 2003, Mr. Shi filed a personal application for “POND’S/ 旁氏” (the “disputed trademark”) under Class 5 for tonics (medicine), baby milk powder, air fresher, sanitary napkins and dental lacquer. However, in the period of trademark opposition for primary publication, Unilever filed an opposition, alleging that its prior registered “旁氏/POND’S” trademark (the “reference trademark”) had become a well-known trademark in China. Unable to achieve a supporting judgment from the Trademark Office and the Trademark Review and Adjudication Board (the “TRAB”), Unilever brought the case to the court.

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Why could an Unregistered Trademark Obtain Protection in Beijing Higher People’s Court?

(By Luo Yanjie) Abstract: To judge whether two goods are similar, generally is ruled upon the basis of the Chinese Goods and Services Classification and then on the courts’ interpretation of different cases and facts. The trademark application shall not be a means to register a mark that is already in use by another party and enjoys substantial influence, and shall also not infringe upon another party’s prior existing rights.

The statement “Goods and service are similar” refers to the goods and services that are associated with each other and thus are likely to produce confusion among the relevant public (our previous post, Why the “NEXT” Trademark could Receive Cross-class Protection in China had introduced similar problems), in which the actual situations conflict with the Chinese Goods and Services Classification of the Chinese Trademark Office (the “CTMO”). In today’s post, we would like to introduce a typical case.

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How A.O.SMITH Corporation Protects Its Interests against the Free Rider AOSIMIHE?

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(By Luo Yanjie) Trademark infringement via the unauthorized use of an enterprise’s name is a common phenomenon in China. Since the requirements for registering a company in Hong Kong are well known for being comparatively lax, many companies attempt to register well-known trademarks as an enterprise name in Hong Kong, and then run a business in Mainland China using this registered name, effectively fulfilling its role as a “free-rider” of another’s well known trademark.

 The A.O.SMITH Corporation was founded over 100 years ago in Milwaukee, Wisconsin, USA, and is a global leader applying innovative technology and energy-efficient solutions to products marketed worldwide. However, the “American”AOSIMIHE (note: AOSIMIHE is a rough approximation of the name A.O. Smith transliterated into Chinese) Appliances (International) Group Ltd., registered in Hong Kong, is a free rider attempting to imply a connection between it and the United States-based A.O. Smith Corporation. Based on its Hong Kong company and trademark registration, the former succeeded in registering its “AOSIMIHE” trademark in Mainland China. Today, we’ll discuss how A.O.SMITH Corporation protected its legal interests against the “American” AOSIMIHE Appliances (International) Group Ltd.

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