(By Luo Yanjie) Today we will introduce an example of a trademark squatting case where a Chinese online game operator rush-registered a trademark. In this case that trademark was canceled by Trademark Review and Adjudication Board.
(By Luo Yanjie) Abstract: The general principle of copyright authorship centers on the signature in the work pursuant to the Copyright Law. The Trademark Review and Adjudication Board shall determine the proof that provided by the administrative counterparty with strict and cautious attitude and consider the changes together with the combination of legal facts and objective conditions so as to make a ruling that protects the right holders’ legitimate rights and interests.
The people’s court shall have the right to revoke the ruling made by the Trademark Review and Adjudication Board (the “TRAB”) and order the TRAB to remake a ruling. For how the TRAB deal with the additional evidences provided by the administrative counterparty during the period of re-ruling, there are no clear laws and regulations. In today’s post, we would like to introduce a typical case with readers.
(By Luo Yanjie) Abstract: “Agent” in conduct of Agent’s preemptive registration refers to “trademark agents, representatives or other agents and representatives based on sales and agency relationship such as distribution and agency”. Commodities that no agent or representative may apply for registration include commodities same as the commodities where the trademarks of the principals or the persons represented are attached to as well as other similar commodities. Considering trademark is a private right, judicial institutions shall fully respect parties’ autonomy.
Abstract: Approval from a reference trademark holder in supporting the registration of a subsequently registered similar trademark is one of the key elements taken into consideration by administrative organs and the People’s Court in deciding whether to grant trademark rights to the latter, based primarily on Article 28 of the Trademark Law.
(By Luo Yanjie) China’s Trademark Law adopts the “first to file” principle, and in general, when a later applied-for trademark appears to be substantially similar to a previously registered trademark, it will not be granted exclusive rights in the use of the mark. In the case introduced in this post, the latter applicant succeeded in its trademark application due to approval by a previously registered holder of a similar trademark. The details of the case are as follows:
(By Luo Yanjie) China trademark application procedure follows the principle of “first application,” but when two trademarks are substantially similar, a subsequent trademark could be considered as distinctive as the previously registered one through a sound reputation among consumers; taking this into account, and the possibility that such reputation may well differentiate a subsequent trademark substantially similar to a previously registered one causes one to consider whether such reputation would be worthy of the granting of trademark rights and protection.
“Where any agent or representative registers, in its or his own name, the trademark of a person for whom it or he acts as the agent or representative without authorization there from, and the latter raises opposition, the trademark shall be rejected for registration and prohibited from use.”
But in judicial practice, the agent or representative has a very vague definition of “authorized” . Our website once analysed the issues concerned in the post “Whether Sales Agents Are Included in the Trademark Agent Squatting Articles of China Trademark Law”. In today’s post, we would like to introduce the opinions of the court from a different aspect. The details are as follows:
(By Luo Yanjie) In determining the similarity of two trademarks, one must take into account the common understanding among the public as to the trademark and the goods it presents (as well as the source), and the public’s comprehension of the words, pictures, designs, or a combination of all of the above. Concurrently, however, the reputation of the trademark must be taken into consideration in order to determine whether the above factors would lead to confusion as to source among the relevant consumers and market. Generally, trademarks are judged by their similarity with the appearance of another trademark; however, in the following described case, the second instance court also considered the reputation of the reference trademark and the understanding of the consumer in relation to a more comprehensive protection of a well-known brand. The significance of the case is primarily that, due to the millions of trademark applications made in China each year, even subsequently registered trademarks that are incredibly similar to those previously registered may be approved for commercial use by the China Trademark Office, due to strained and restricted resources on its part. In any case, the trademark involved in this case is a well-known one, and for this reason, the court decided that the subsequently registered mark would not be approved for use.
“Where any agent or representative registers, in its or his own name, the trademark of a person for whom it or he acts as the agent or representative without authorization therefrom, and the latter raises opposition, the trademark shall be rejected for registration and prohibited from use.”
But in judicial practice, the agent or representative has a very vague definition and limit, and interpretation regarding the meaning of “authorized” is currently in dispute. Our website once introduced and analyzed the issues concerned in the post “Whether Sales Agents Are Included in the Trademark Agent Squatting Articles of China Trademark Law”, and in today’s post we would like to introduce the opinions of the court having analyzed the case from a different aspect. The details are as follows: