Shall Quantities of Malicious Registration Be Improper Means in China Trademark Law?

(By Wang Ting) In China, the Trademark Law applies the Principle of First Filing and when the Trademark Office reviews these applications, they usually examine whether there are prior applications or registrations existed, but not the intentions of filing such prior registrations. It means they don’t consider the bad faith during trademark registration procedure. Many foreign companies have applied and obtained the trademarks for their own products and services at the beginning. However, as so-called villains can always outsmart, besides the malicious registrations of others’ un-registered trademarks, there are lots of cases in which the trademark squatters register the well-known or popular trademarks on different goods or services. Thus foreign companies suffered from such consequences. Today, in our introduced case, we are going to discuss about the situations that the acts of malicious registrations under different classes are finally determined as improper means as stipulated in the Trademark Law.

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Bruce Lee’s Daughter Won Trademark Opposition for the Chinese Name of the late Bruce Lee

(By Luo Yanjie) The most common trademark squatting is to register celebrity names as trademarks in China. In following post, we will introduce a case regarding where the court rejected the rush-registered trademark via the use of late celebrity names. Bruce Lee, with his Chinese name 李小龍, was a late Hong Kong American martial artist, Hong Kong action film actor, martial instructor, filmmaker and the founder of Jeet Kune Do. The descendants of the late Bruce Lee set up a Bruce Lee Enterprise, LLC in the operation of related matters to the late Bruce Lee.

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Analysis on New Provision of Agent’s Trademark Rush-Registration in China Trademark Law

(By Luo Yanjie) According to the latest news report, more than 14 millions of trademark applications in China have already been filed by June 2014. It indicates that Chinese economy develops very fast and also that brands across China and even all over the world, big or small, are attempting to the protection of trademark registration in China. However, there is no doubt that some trademarks were registered with bad faith at the beginning, i.e., pirate trademark rush-registrations. Among those trademark rush-registrations, some of rush-registrars are connected to the original holders, thus leading to prevention from agent’s trademark rush-registration as regulated in Article 15 of the Trademark Law (2001 version). Furthermore, in the newly applicable Trademark Law from May 2014, legislature departments made implementation on the Article 15. In today’s post, we will discuss the modification and its application.

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P&G vs. Vidal Sassoon Hairs School’s Judgment Abstract

p&g

(By Luo Yanjie) An enterprise name attempting to use a well-known trademark is quite the norm in China. In today’s post, we would like to introduce a typical case where the courts made a final judgment that the infringer constitutes infringement but does not change its enterprise name. However, the judgment is far from playing its role in the containment of this violation.

Introduction to the Case:

Appellant (Defendant at the first instance): Beijing Royal VIDAL SASSOON Beauty Hair School (the “Royal School”)

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Alert: SoundCloud, Ubuntu and Lots of Famous Brands are being Rush-Registered as Trademarks in China !

(By You Yunting) Recently, a news article sparked concern that the Qihu Investment Co., Ltd (a similar Chinese name to Qihoo 360 Technology Co., Ltd) had rushed-registered hundreds of trademarks belonging to internet venture companies. Even though Qihoo 360 Technology Co., Ltd later clarified that it had nothing with the Qihu Investment Co., Ltd, the news still attracted attention from both companies and lawyers.

Many famous companies’ brands, such as Ubuntu, Hotel Tonight and SoundCloud were being rush-registered as trademarks and some have even entered into the process of announcement by the Chinese Trademark Office after a preliminary examination and within three months of the date of the publication. The overseas companies may lose the exclusive right of trademark in China unless they file an opposition against these rush-registrations. Worse, they will not be able to use these brands they have created when entering the Chinese market for a significant length of time. In today’s post, we would like to address how venture companies should resolve trademark squatting.

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How Venture Companies Should Deal with Trademark Squatting?

(By You Yunting) Recently, a news article sparked concern that the Qihu Investment Company (a similar Chinese name to Qihoo 360 Technology Co., Ltd) had rushed-registered hundreds of trademarks belonging to internet venture companies. Even though Qihoo 360 Technology Co., Ltd later clarified that it had nothing with the Qihu Investment Company, the news still attracted attention from both venture companies and lawyers. In today’s post, we would like to address how venture companies should resolve trademark squatting.

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Beijing Court Rejected HUGO BOSS‘s Opposition against “H30SS” Trademark

HUGO BOSS

(By Luo Yanjie) China is facing a worsening situation with regards to serious trademark squatting. With more and more registrars rushing to register possible trademarks that once were used by famous enterprises, there is little help for enterprises holding such famous trademarks. For example, a registrar has just succeeded in the grant of a trademark, similar with what HUGO BOSS AG had, under the class for cosmetics and fragrances. Today we will introduce this case as follows.

 

Introduction to the Case:

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Korean Game Company Defeated China Local Agent for Cancelleation of Rush-registered Trademark

ESTsoft

(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.

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Unilever Defeats Squatting of POND’S Trademark in China

pond's

(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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GAP Defeated a Trademark Squatting in China After 20 Years

GAP

(By You Yunting) It is well known that GAP is a famous brand in clothing. However, in China, someone attempted to register “GAP” under Class 9 for eyewear products as a trademark. GAP has been defeating similar trademark squatting for over 20 years.

Introduction to the Case:

Applicant of a retrial (Plaintiff in the first instance and Appellant the in second instance): GAP (ITM) INC.

Respondent (Defendant in the first instance and Appellee in the second instance): Trademark Review and Adjudication Board (the “TRAB”)

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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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Why Only an Interested Party may File an Opposition to a Trademark Application in China

(By Luo Yanjie) Abstract: The new Trademark Law stipulates that only the interested party may file an opposition to a trademark application based on relevant grounds. Previous opposition proceedings were so complicated that the new Trademark Law removes the trademark opposition review proceedings completely, with the exception of the review period of twelve months.

Our Trademark Law has been revised many times since its inception in 1982. In August 2013, the National People’s Congress approved the latest revised Trademark Law. In today’s post, we will analyze and compare the two Trademark Laws from the standpoint of the revised opposition system.

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China’s Courts won’t Prohibit a Trademark Squatting with Post-Approval

古珀行

(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.

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When a Preceding User of a Trademark Counters a Subsequent Registrant in China?

hannas

(By Luo Yanjie) Abstract: China’s new Trademark Law still enforces the principle of “first to file,” but at the same time a prior user of a trademark only need prove to some extent that their prior use of a registered trademark had a degree of popularity, and need not prove that a subsequent user of the trademark “squatted” the trademark by registering it. If the board approves such prior use, the prior user will have the right to continue using the trademark in the original scope of use. “Improper means” as stated in Article 31 of the Trademark Law, refers to situations “where the applicant knows or should have known that the trademark had been used by others with a certain degree of influence, and preemptively registered the same, then such applicant shall be determined to have used improper means to register the mark.”

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Why China’s Courts Held an Ambiguous Attitude to the Rush Registration of Another’s Works as a Trademark?

When handling a dispute between trademark and copyright, Chinese courts always apply a rather high standard to determine whether works protected under trademark law will also receive protection under the copyright law. Our website previously discussed this question in the posts Analysis on Proof Requirements in Figurative Trademark Infringing Others’ Copyright Cases by China Court and Why the Calligraphic Character’s Copyright Failed to Defeat Trademark Right.Today, we’d like to introduce a case regarding conflicts between a work of fine art and a trademark, due to the identical combination of Chinese characters and English letters.

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