trademark similarity Archives - Bridge IP Law Commentary

Could Prior Used Right Be Counterargument Against Latter Registered Trademark?

Posted on October 17, 2016 by yytbest

(By Luo Yanjie) Recently, the Supreme People’s Court interpreted a definite attitude through a complicated case lasting for years that prior-used logo shall not be used as counterargument against latter registered trademark except under certain circumstances. The followings are our detailed introduction:

Introduction to the Case:

1st Retrial Petitioner (Plaintiff at first instance, Appellant at second instance): LIANG Huo (the “Liang”);

2nd Retrial Petitioner (Plaintiff at first instance, Appellant at second instance): LU Yijian (the “Lu”)

Could A Prior User Constitute Trademark Infringement against the Exclusive Right Holder of a Registered Trademark?

Posted on May 16, 2014 by yytbest

(By Luo Yanjie) Our former trademark laws had not yet stipulated whether a prior user constituted trademark infringement against the exclusive right holder of a registered trademark. However, the implementation of the update Trademark Law this year solved the problem. In today’s post, we will introduce a typical case concerning the prior user succeeded in competing against the exclusive right holder. Even though the case was judged before the implementation of the update Trademark Law, its judgment was kept pace with legislative purpose of the update Trademark Law.

Why Ronghe Shaofang Wine constituted Trademark Infringement to Maotai Wine?

Posted on January 14, 2014 by yytbest

(By You Yunting)Maotai, a well-known Chinese baijiu (the classic Chinese alcohol made from distilled sorghum that averages an alcohol content from of 53 percent), is made in Maotai Town, Huanren city in Guizhou Province. In Maotai town, there are many liquor factories but only the KWEICHOW MOUTAI CO., LTD (the “MOUTAI”) holds the “贵州茅台酒” trademark (the “disputed trademark”). On account of “Maotai” brand name glamour, such free riders likeother liquor factories’ use of the disputed trademark often happen. We would like to introduce a typical case regarding that Guizhou Ronghe Shaofang Wine Business Limited Company used a same bottle label and packaging with that of Maotai Wine but carries its “荣和”（pronounced “Ronghe” in English）brand in our today’s post. The final binding judgment contained by Beijing No.2 Intermediate People’s Court decided that such act of using the same bottle label and packaging constituted trademark infringement.

Could Audi Succeed in Applying for “SQ2”, “SQ4” and “Q9” Trademarks in Mainland China?

Posted on January 8, 2014 by yytbest

(By Luo Yanjie) Abstract: A subsequently applied trademark must not be identical with or similar to a prior trademark. The trademark submitted for registration must have sufficient characteristics that allow it to be distinguishable. A few days ago, foreign media outlets reported that Audi had filed several trademarks application for model names, including SQ2, SQ4 and Q9. This is a sign that these vehicles will likely be sold in China in the future.

According to our research, further information about those trademarks is not yet available in Mainland China. This is likely either because Audi has not started the application procedures, or because the Trademark Office has not yet input Audi’s application information online. However, this does not affect our analysis on the outlook of those trademarks in mainland China.

Why Shanghai Court Enforces Trademark’s Diligence Obligation on Original Equipment Manufacture?

Posted on November 21, 2013 by yytbest

(By You Yunting) Original Equipment Manufacture (the“OEM”) refers to a commercial model where the Principal person is responsible for the brand, research and design, and marketing, meanwhile, the manufacturer is responsible for production. As a big manufacturing country, OEM is an important way for our manufactured products to participate in international competition. Under China’s Laws, however, it is unclear whether OEM constitutes as a trademark infringement, and local courts have handed out different decisions for this problem. According to the author’s information, Fujian higher court, Zhejiang higher court and Shanghai higher court held that OEM manufacturers does not involve trademark infringement, but Guangdong higher court decided that the OEM manufacturers shall take responsibility for trademark infringement in many cases. The Supreme Court has not yet expressed its opinion towards this problem.

China Supreme Court Issued A New Typical Trademark Infringement Case of OEM

Posted on November 14, 2013 by yytbest

(By You Yunting) As a big manufacturing country, China deals with a lot of products categorized as original equipment manufacturing (the “OEM”). With regard to whether OEM constitutes trademark infringement, where local courts had handed out different decisions and infringing standards for this problem, the Supreme People’s Court has not yet expressed a clear standard for determining. Recently, China’s Supreme People’s Court has published the 2012 Top 50 typical trademark cases, and, among them, there is a case concerning OEM trademark infringement, where the manufacturer of an OEM won an infringement claim against it by the trademark holder. From the SPC’s decision in this case, we find rather clear evidence of the court’s attitude toward this particular issue.

Why did the Court not Approve the Trademark Coexistence Agreement?

Posted on October 2, 2013 by yytbest

（By Luo Yanjie）Abstract: Current laws have no provisions as to whether a trademark coexistence agreement made by and between the trademark holder with a prior trademark and the trademark applicant with a latter trademark could impact the validity of the latter trademark. Under such circumstances, the courts shall consider and decide whether to approve the above-mentioned agreement. Where litigation concerning trademark ownership affirmation takes the form of an administrative suit, the courts shall, within the scope of the Trademark Review and Adjudication Board’s (the “TRAB”) administrative acts, decide whether its administrative acts are valid and rational.

Can Prior Rights in a Business Name Counterfeit With a Subsequent Trademark Right?

Posted on August 13, 2013 by yytbest

Abstract: trademark holder is not necessarily entitled to prevent others from using its trademark into a business name because operation method needs to be judged. On the contrary, consideration upon prior right of business name does not just depend on first registration but on operation methods.

(By Luo Yanjie)Using another’s registered trademark as a business name is a common phenomenon of copycat brand names in China. In today’s post we would like to introduce a typical case to you. Relying on the fact that the business name “凯伦 Kanren” was registered earlier than that of the trademark, the court determined the defendant did not infringe upon the exclusive rights in the trademark. In the author’s opinion, the ratio decidendi is worth further discussion:

Is an “A+B” Combined Trademark Substantially Similar to a Separate “B” Trademark?

Posted on July 23, 2013 by yytbest

(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?

Would the Cancellation of the Applicant Lead to the Invalidity of Trademark Application in China?

Posted on June 7, 2013 by yytbest

(By Luo Yanjie) Abstract: trademark application may take a long time. If the applicant encounters any change on its subject qualification, it shall handle the trademark transfer procedure as soon as possible, or otherwise the trademark could be cancelled.

It normally takes about one year from submitting the trademark application to the right granting. If during the application process it encounters any opposition, the time it takes for right granting adjudication would be much longer, possibly extending to several years. While during that period, the applicant may face a change on its subject qualification, and then will the trademark application be influenced in such a situation? In today’s post, you will see a typical case that we would like to share it with our readers.

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

Posted on November 15, 2012 by yytbest

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.

Matters for Attention in the Trademark Opposition

Posted on December 23, 2011 by You Yunting

Recently, the Qiaodan Company (Qiaodan is the pronunciation of Michael Jordan’s name), a Chinese domestic sporting goods manufacturer, confronted trademark troubles on IPO in China, because Nike has opposed to 8 trademarks of Qiaodan, claiming that it might lead to the confusion with Nike’s “Air Jordan”. Nevertheless, such opposition was refused by China Trademark Office, and Nike filed no administration lawsuit afterwards.

The opposition filed by Nike to Qiaodan is based on the provision of the China trademark law:

Matters for Attention in Trademark Refusal Review in China

Posted on December 15, 2011 by You Yunting

It is reported that the British Lotus who will adopt “路特斯”, the transliteration of Lotus in Chinese, as its local brand in China due to a Chinese domestic company first registered the trademark of “Youth Lotus”. It’s also mentioned in the report that British lotus lost the trademark though it should have the chance to get it through the trademark refusal review. Today, Bridge IP Law Commentary will introduce you the system of review on the trademark refusal in China.

As regulated in the Article 32 of China trademark law:

Introduction of China’s Legal System of Trademark Renewal

Posted on November 17, 2011 by You Yunting

Highlight: The first registered trademarks after the promulgation of the trademark law in 1982 will be in the renewal period soon, and most of such trademarks now are owned by foreign invested companies. In this essay, Bridge IP Law Commentary will give our advice and analysis on the trademark renewal.

The system of trademark application was first carried out in China in 1982 with the promulgation of the Trademark Law, by which the period of validity of a trademark registered in China is ten years from the day of approval and can be renewed, otherwise it will be cancelled. Therefore, most first registered trademarks are coming into the renewal period in 2012 or 2013, and among which the trademarks registered by foreign invested companies occupy a higher proportion due to the weak awareness of the trademark of Chinese enterprises then. For this reason, we would like to remind foreign clients to apply for trademark renewal timely during the renewal period and the grace period. Today, our website will introduce and analyze China’s legal system of trademark renewal.

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