Tag Archives: trademark lawyer

Why Nippon Lost Its Lawsuit against Trademark Infringement by Taobao Sellers?

Posted on by
u=2281873618,2747446169&fm=23&gp=0_副本

(By Luo Yanjie)In March 2011 the globally well-known paint producer Nippon Paint Co. Ltd. (“Nippon”), discovered Zhanjin Company had set up a shop on Taobao.com, the biggest online market in China, and had been using Nippon trademarks, ads and trade dress concerning Nippon products with no approval or license from it. With no reply from Taobao.com after filing a complaint, Nippon sued Zhanjin and Taobao in court, and yet the complaint was rejected by the judge. Dissatisfied with this result, Nippon made an appeal to the Shanghai No.1 Intermediate People’s Court, who ruled that the adoption of Nippon’s trademark by Zhanjin is for product information display only, and it could lead to no likelihood of confusion among the public. In addition, the court ruled that no commercial interests of the plaintiff would be damaged. Based on these rulings, the alleged trademark infringement claim could not be established, and therefore the original decision was maintained.

READ MORE

Could Nike Get the Trademark “Liuxiang”?

Posted on by

(By Luo Yanjie) Recently, the lawsuit filed by Nike against China’s Trademark Review and Adjudication Board (“TRAB”) (note: the link is in Chinese) was heard in the Beijing No. 1 Intermediate People’s Court. The case was brought because TRAB refused Nike’s application to trademark Liu Xiang (刘翔) for the reason that the trademark had been registered by another company twenty six years ago, namely in July of 1986. At that time, a company named Shanghai Liuxiang Company applied for the trademark Liu Xiang Brand (刘翔牌) in the class of clothing, and the exclusive period for the use of that mark will last until 2017. Incidentally, the Liu Xiang Brand trademark happens to have the same name as the famous Chinese athlete, Liu Xiang. The case is currently being heard, but the author believes Nike has little chance of winning the case. Today’s will examine the issues involved in this case.

READ MORE

What Geographical Names Can be Registered As Trademarks in China?

Posted on by

It is reported that (Note: the link is in Chinese) Wakayama County of Japan recently announced that the trademark application for “Ji Zhou” (纪州) filed by a Hong Kong company on the Chinese mainland concerns a publicly well-know geographical name. The County has also filed an objection with the Chinese Trademark Office because this name is not appropriate to serve as a trademark. The report also stated that Wakayama County has been paying close attention to trademark applications in China since 2010 and has already had two objections granted against trademark applications for “Wakayama.” Today, we would like to discuss whether geographical names can be registered as trademarks:

READ MORE

Does Chinese Trademark Law Permit the Coexistence of Identical or Similar Trademarks?

Posted on by

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.

READ MORE

How to Decide Infringement When Conflict between Trademark and Trade Name in China?

Posted on by

By Luo Yanjie

As two different concepts in law, trademark plays the role as to distinguish the origin of the product or services, and the trade name is the literal expression to indicate different companies. But in the daily operation, we may see the confusion between these two concepts, and the trade name may also be used as kind of mark in business. Naturally, we see many companies choose to register their name as the trademark. Despite the similar function of them, the trademark and trade name are verified by different administrations (the mark is subject to the administration of trademark office, and the trade name is ruled by local administration of industry and commerce), but that also triggers the conflict between two objects. In today’s post, we would like to analyze the conflict occurred when trade name registered prior to the trademark by different subjects.

READ MORE

Calculation to the Illegal Operation Income in Trademark Infringement

By Luo Yanjie

The trademark infringement in China, honestly though reluctant to admit, is very serious. That made the administration and the judicial organ pay more attention to the infringement investigation, and on the other hand, foreign invested companies could also be dragged into the conflict concerning the trademark, like Apple encountered enforcement by local administration for iPad trademark. In such circumstance, the calculation to the illegal income amount shall be important to the infringer, which shall influence their legal liability in direct way.

READ MORE

Trademark Infringement Liability of Real Estate Lessors in China Law

Posted on by

 By Luo Yanjie

In a recent news report (note: the link is in Chinese), Guang Dong OPPO Mobile Telecommunications Co., Ltd, the holder of trademark OPPO used in mobile phones, filed a lawsuit against a company and the lessor of its store, claiming ceasing the infringement and the compensation. Beijing Fengtai District People’s Court judged the joint liability of infringement of the both the shop and the real estate lessor and shall compensate the plaintiff 10, 000 yuan.

This is a typical trademark dispute arisen by the shop’s infringement and then lead to the liability of the market which is the real estate lessor, and in the similar cases, the market tends to feel being wronged for what it provides is the real estate renting not the conducts or aids in the infringement, yet the court will judge the establishment of the infringement liability. Today, we would like to analyze the liability taking in the similar cases.

READ MORE

How to Apply for Evidence Preservation for IPR Trials in China

Posted on by

By Luo Yanjie

In an earlier Microsoft’s case of right protection (Note: the link is in Chinese), the company applied for the evidence preservation to the court after they found the piracy using by others, demanding the perpetuation covering the pirated Microsoft software installed in the computers in the defendant’s business place. The application was accepted by the court, who thereafter sealed and checked the computers claimed and found each apparatus has been installed at least 5 types of software of Microsoft. Whereby, Microsoft gains the compensation of more than 1 million yuan in the following trials.

READ MORE

What Tencent’s Trademark Strategy Tells Us?

Posted on by

By You Yunting

Today, we would like to introduce how Chinese enterprises protect their brands. Months ago, the news reporting Tencent (SEHK: 700)’s QQ trademark registration in all classes, including condom, is heatedly spread among Chinese netizens. From the report, we saw the local IT giant registered more than 1, 000 trademarks in the classes to protect its well-known mark “QQ” avoiding the free-riding by others, among which the class of food, matchmaking and condom is listed. Unlike the author who criticized Tencent a muddled thinking, we prefer the applications as the company’s thoughtful and overall strategy on trademark protection. Now, here’re our conclusion on Tencent’s experience and the analysis:

READ MORE

Comments on the Trademark Squatting of HERMES

Posted on by

Another Lesson from the Negligence of Trademark Localization

It’s reported (note: the link is in Chinese) that the well-known luxury brand HERMES INTERNATIONAL has registered its international trademark of HERMES in China as early as in 1985, while its official Chinese name 爱马仕 is unregistered. While, on the other hand, Dafeng Garment (the “Dafeng”), a clothing company admitted in Foshan City of Guangdong Province registered the Chinese trademark of爱马仕 in September of 1995, though it was disputed later in 1997 and 2001, Dafeng still owns the right of the trademark. In 2009, HERMES INTERNATIONAL registered爱马仕 in the class of tie manufacture, which was refused by the trademark office and remained rejected by the Trademark Review and Adjudication Board (the “Board”) after the review procedure. After that HERMES INTERNATIONAL filed the lawsuit against the Board, but finally the court supported the decision made by the Board.

READ MORE

Could There Be Any Improvement on Facebook’s Trademark Application Strategy in China?

READ MORE

Beijing Files Most IPR Lawsuits in China

As reported by Mr. Chi Qiang, the chief justice of Beijing Higher People’s Court,on the 5th Session of the 13th People’s Congress of Beijing, there have judged 12, 269 IPR cases in Beijing courts of each level, which is a year by year increase of 16.3% and occupies 22.3% of all around China. For these cases, both total amount and new type case are rank first in all the courts nationwide.

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)

READ MORE

Why the Acuvue of Johnson & Johnson Encounters Trademark Dilusion?

The State Food and Drug Administration of China (SFDA) recently released the news on its website that the colorful plain contact lens will be put into administrative supervision over medical equipment (the “News”). Though the equipment is referred as the “colorful plain contact lens”, while it’s reported by media in the name of “Acuvue/Acuvue” (the “Acuvue”, means beautiful sight in Chinese). Afterwards, Johnson & Johnson (NYSE: JNJ), the manufacturer of “Acuvue”, stated that the words are the exclusive trademark of it, and only the contact lens with cosmetic effect could be called as “Acuvue”.

READ MORE

Legal Issues concerning Trademark during the Exhibition in China

In recent, more and more Chinese companies is developing their business outside China and thereby brings more chances for exhibition. Meanwhile, with the rapid economy development on China, the exhibition sponsored by China becomes more and more influential. Such exhibitions have become the key occasion for the release of new product and technology of the companies in China and abroad, which followed by many legal problems with the IPR matters are the most prominent ones. Bridge IP Law Commentary today will give our analysis on the issues related to the exhibition trademark.

READ MORE

Coca Cola Gets the Preliminary Win in the Case of “Qoo” against “Ku Wawa” in China

It was reported by  the Beijing News and Legal Evening Paper that the Beijing First Intermediate People’s Court (“Court”) has sentenced the case Coca Cola charging the infringement of the trademark “Ku Wawa” registered in the against Coca Cola’s copyright of designed trademark “Qoo”, judging that the Trademark Review and Adjudication shall rescind its approval for trademark registration of “Ku Wawa” and make a new decision.

The Court held that the trademark “Ku Wawa” bore no material similarity with  the trademark “Qoo”, which however was registered by Coca Cola in 2001, and for this reason “Ku Wawa” shall not infringe the copyright of “Qoo”. On the other hand, although the registered products of beer of “Ku Wawa” is different from the beverage of “Qoo”, they actually relate in consumers and marketing approaches. Accordingly, the Court decided the trademark “Ku Wawa” constitutes a similar trademark used in the similar products, which could be trademark infringement, and demanded the Trademark Review and Adjudication Board cancel “Ku Wawa” and make a new decision.

READ MORE