(By Yue Mengyan) Pursuant to China trademark laws and regulations, if certain trademarks have been already registered for certain goods, applicants cannot apply for such same or similar trademarks for any same or similar products. However, if the trademark coexistence agreement is made by the right holder of prior registered trademark and applicant of an identical or similar trademark without interfering in each other’s interests, then it is possible for the applicant to successfully obtain the approval of such application.
(By Luo Yanjie) In our today’s post, when a foreign company ordered a number of Hero pens from a Chinese company, the Chinese company used the fake products to replace the authentic ones and then the fake products were found to be confiscated and punished by the Customs. Finally, the foreign company brought the Chinese company into the court and won the lawsuit, claiming that the Chinese company disobeyed the contract.
Hero pens are famous and have received well reputation for its good quality in the industry of pens in China.
(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.
(By Luo Yanjie) Abstract: Generally, two goods that fall into the same similar group constitute similar goods. “Similar goods” refers to the goods that are identical in such respects as the function, purpose, industry, sales channel and consumers; or goods that are likely to lead the relevant public into thinking they are associated with each other and cause confusion.
Trademark registration in China applies the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (the “Nice Classification”). Every year the State Trademark Office in China will update the Chinese Goods and Services Classification in accordance with the Nice Classification. A trademark shall be registered in accordance with the Chinese Goods and Services Classification. When a trademark dispute brought to a court, the Chinese Goods and Services Classification is not used only as a reference for judgment of similar goods or services.
Abstract: fair use of a registered trademark does not constitute infringement, but users shall both have no intent to infringe and accord with the objective facts. The court facing those cases shall apply Trademark Law to consider the original intention of Trademark Law instead of applying a rigid formula to determine that the infringement shall rely on “whether the results cause confusion”．
(By Luo Yanjie) Generally speaking, using a registered trademark without permission constitutes trademark infringement. However, a few exceptions to the general rule still exist. For example, in today’s post a typical case will be introduced.
(By Luo Yanjie) For the infringement caused by OEM in China, different courts hold different opinions in China, and in this essay you could see a case describe the infringement determination. The determination of trademark infringement should be subjected to whether or not potential consumers would be confused when making their decision to purchase the product. If the potential consumer is not confused by the product, then it should not be considered as an infringement.
(By Luo Yanjie) In 2001, the globally known sportswear brand Adidas acquired a trademark certificate issued by the Trademark Office of the State Administration of Industry and Commerce (“SAIC”), namely a certificate numbered 1489454 for the “three slants” trademark, which was approved in Class 25 for clothing, ball shoes, hats, socks and other similar products; in addition, the certificate numbered 1536558 for the “three slants” trademark was approved in Class 18, which covers bags, clothing case, traveling bags and belts. On June 21 2003, Adidas transferred the trademarks to its affiliates.
(By Luo Yanjie) Pfizer is the holder of a blue, diamond-shaped mark (the “Pfizer trademark,” number: 3110761). The trademark was approved in Class 5 for pharmaceutical preparation, medicines made for human consumption, antibiotics, medical nutrition supplements, cleaning agents, and veterinary preparation. The registration period for the trademark commenced on May 28, 2003 and will expire on May 27, 2013.
On July 21, 2005, Pfizer representatives purchased a box of medicine priced at RMB 50 yuan from the New Concept Company. The medicine was mainly intended to cure “erectile dysfunction.” The front and back cover of the package contained both “Viagra” and “TM,” which was underlined and accompanied by the diamond image. The manufacturer was printed as “Jiangsu Lian Huan Pharmaceutical Co., Ltd” (“Lian Huan”) dated on April 14, 2005. The opaque inner packaging also contained the words “Viagra” and “TM,” as well as the manufacturer “Lian Huan.” The packaging of the medicine was also diamond-shaped, in accordance with the shape of the tablet. The medicine itself was light blue in color, diamond compass shaped, and contained the words “Viagra” and “TM.” Pfizer believes that these products constituted three-dimensional trademark infringement and thereby sued the manufacturer and seller.
Last year, the Supreme People’s Court issued the final decision in the protracted dispute between LACOSTE and CARTELO. The decision clarifies cases involving long brand history and could guide future hearings on similar disputes in courts of all levels. In the decision, LACOSTE lost the lawsuit, and no infringement was found on the part of CARTELO. In the judgment, the Court took the first steps towards establishing a system of “trademark coexistence,” which means the coexistence of similar trademarks in the same class, for use in China’s trademark cases. Today’s post will provide an analysis of the application of this system in China.
According to the news from local media in China, Starbucks Corporation (NASDAQ: SBUX) recently filed a lawsuit against the Trademark Review and Adjudication Board (the “Board”), for it was refused by the Board for the application of the review of 沙巴克 (which is similar to the Chinese translation of Starbucks 星巴克 in Chinese) trademark application on mineral water products(沙巴克is similar to the translation of Starbucks 星巴克 in Chinese). 沙巴克 was applied by an individual on 16th July of 2003 on the mineral water beverage, which in Starbucks Corporation’s opinion shall constitute the similarity of identity of its local trademark of 星巴克, and therefore, Starbucks Corporation filed a trademark review to the Board and also applied a official establishment of the well-known trademark of 星巴克 in the field of Café, Café operation & service and coffee beverage.(the image above is the Starbucks café and the poster of the World of Legend)
—Comment I on the revision of China Trademark Law
Highlights: The Comment One on the draft of China Trademark Law amendment. The new regulation expands the scope of malicious squatting of trademarks and the protection on well-known ones, while it still leaves an ambiguous space for application.
The draft of China Trademark Law amendment (the “Draft”) is issued by the Legislative Office of State Council (LAO), a working body to the State Council assisting the Premier in handling legislative affairs and other legal affairs, for the public comments. After study on the draft, Bridge IP Commentary will make series analysis on it.
Highlight: To introduce the laws and regulations concerning the conflict between trademark and company names in China and matters in need of attention regarding foreign companies applying for in trademarks.
Case study: Beijing Baoma (北京宝马), the company of BMW Group’s first agent in mainland China and the first one translated BMW to the current popular Chinese name Baoma (宝马), which means speeding horse and has become a vivid symbol of their vehicles, was demanded to change its name by BMW Group, under the pressure that even more the parties may get litigated against each other.