How A.O.SMITH Corporation Protects Its Interests against the Free Rider AOSIMIHE?

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(By Luo Yanjie) Trademark infringement via the unauthorized use of an enterprise’s name is a common phenomenon in China. Since the requirements for registering a company in Hong Kong are well known for being comparatively lax, many companies attempt to register well-known trademarks as an enterprise name in Hong Kong, and then run a business in Mainland China using this registered name, effectively fulfilling its role as a “free-rider” of another’s well known trademark.

 The A.O.SMITH Corporation was founded over 100 years ago in Milwaukee, Wisconsin, USA, and is a global leader applying innovative technology and energy-efficient solutions to products marketed worldwide. However, the “American”AOSIMIHE (note: AOSIMIHE is a rough approximation of the name A.O. Smith transliterated into Chinese) Appliances (International) Group Ltd., registered in Hong Kong, is a free rider attempting to imply a connection between it and the United States-based A.O. Smith Corporation. Based on its Hong Kong company and trademark registration, the former succeeded in registering its “AOSIMIHE” trademark in Mainland China. Today, we’ll discuss how A.O.SMITH Corporation protected its legal interests against the “American” AOSIMIHE Appliances (International) Group Ltd.

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Can Carnival Films Retake the Downton Abbey Trademark Squatted in China?

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(By Luo Yanjie) According to a recent report by the British Broadcasting Corporation (BBC), the British television series Downton Abbey (In Chinese, translated as “唐顿庄园 Tangdun Zhuangyuan”), which is very popular in China, and Carnival Films, who produced Downton Abbey, was attempting to sell Downton (in Chinese, Downtown is translated as “唐顿 Tangdun”) branded wine in the North American, European and Australian markets. However, according to a disclosure by the State Trademark Office, some Chinese merchants drew first blood, registering the “唐顿庄园 Tangdun Zhuangyuan” trademark and subsequently obtaining rights in the trademark. This news also pointed out that a Shandong-based Merchant Li Xiangjun had already received ownership of the “唐顿庄园 Tangdun Zhuangyuan” trademark for wines in China.

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

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:

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Fair Use of a Registered Trademark does not Constitute Infringement

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.

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“Passive use” is not equivalent to “Prior use” under Article 31 of the Trademark law

(By Luo Yanjie) Pursuant to Article 31 of the Trademark Law: anyone applying for trademark registration may not damage the existing rights of others obtained by priority, neither may it register, in advance, a trademark that has been used by others and has become influential. In practice, consumers apply a “name” to a product, which can then be considered a kind of “trademark” for the product itself. Is such passive use attributable to prior use? In regard to this legal issue, there are no actual legal provisions speaking to it in Mainland China. However, the answer in today’s post appears to be a resounding no.

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Can A Subsequently Applied Trademark be Registered if the Owner of A Previously Registered Similar Trademark Does Not Oppose?

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:

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Why Trademark “K” Failed in Its Application?

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(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.

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Why Couldn’t the Trademark “Bond” Be Applied to Contraceptives?

(By Albert Chen) The Beijing High People’s Court (the “Beijing High Court”) established the “merchandising right” in a 2011 judgment on an administrative dispute between the Trademark Adjudication and Review Board (the “Board”) and DANJAQ, LLC (the “DANJAQ”). That was the first judicial definition of the right, and the first time it was included as a protected “prior right.”

In today’s post, we would like to describe the facts in the case, and introduce to our readers the opinions of Beijing High Court and our comments on the matter.

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Introduction to A Case on Whether OEM Would Constitute Infringement in China

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(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.

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Why Glasses and Clothing Were Deemed Similar Products Under the Trademark Law, Part II

 (By Luo Yanjie) Today, we will introduce all of our opinions on yesterday’s case.

Lawyer’s opinions:

The reason why the two courts made different conclusions than the Trademark Office and the Board is that the court does not blindly follow the Similar Products and Services Form. With that in mind, we will share our opinions on the legal issues in this case:

1. The preconditions for trans-class protection of well-known trademarks

Article 13 of the Trademark Law provides:

“Where a trademark for which the application for registration is filed for use on non-identical or dissimilar goods is a reproduction, imitation, or translation of the well-known mark of another person that has been registered in China, misleads the pub1ic, and is likely to create prejudice to the interests of the well-known mark registrant, it must be rejected for registration and prohibited from use.”

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Why Glasses and Clothing Were Deemed Similar Products Under the Trademark Law, Part I

(By Luo Yanjie) Today and tomorrow’s posts will introduce an administrative lawsuit recently decided by Chinese courts. The greatest focus point in the case is that the courts broke the barrier between trademark classes to hold that glasses and clothing are similar classes of trademark application.

According to China’s Trademark Law, trademark applications in China follow the “first application” principle. This means that for similar products whoever applies for a trademark first owns it and receives protection in that class, except for well-known trademarks, which receive cross-class protection. To determine what classes are identical or similar, the Trademark Office, Trademark Adjudication and Review Board (the “Board”), and other administrative institutions follow the Similar Products and Services Form that they promulgated. In practice, however, courts do not blindly follow this form. Today’s case is a prime example of the different opinions held by and different results reached by administrative organs and courts.

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Why Couldn’t the Trademark “Bond” Be Applied to Contraceptives?

(By Albert ChenThe Beijing High People’s Court (the “Beijing High Court”) established the “merchandising right” in a 2011 judgment on an administrative dispute between the Trademark Adjudication and Review Board (the “Board”) and DANJAQ, LLC (the “DANJAQ”). That was the first judicial definition of the right, and the first time it was included as a protected “first right.” The decision can be considered a clarification of the “merchandising right” by the judicial organs as well as broadening the scope of first rights.

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Whether Sales Agents Are Included in the Trademark Agent Squatting Articles of China Trademark Law?

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(By Luo Yanjie) Due to the late establishment of the relevant law and system, the trademark squatting situation in China is quite serious, and much squatting is conducted by trademark agents or partners. Article 15 of the Trademark Law provides that:

“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.”

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Summary of Administrative Case Verdict on “Britney Spears” Trademark Squatting (II)

We introduced you to the first instance of Britney Spears’ trademark administrative lawsuit yesterday, and today we will continue that discussion concerning the second instance and provide our comments on the case.

In February 2012, Britney Spears appealed to the Beijing High People’s Court citing her dissatisfaction with the first instance decision. The court of second instance decided that as a first right, the right of publicity and use of one’s name is protected by Trademark Law. Furthermore, any unlicensed registration of the trademark would cause damage to the right of name when the relevant public mistakes the origin of the product or service with the name owner, or when the relevant consuming public believes there is an association between the two parties. Therefore, to determine whether a disputed trademark will harm the right to use one’s name, one must first consider whether the owner of the name is well known or popular. Moreover, to determine whether the relevant right will be regarded as a first right, the relevant date is the registration date of the disputed trademark. The focus of this case is whether Britney Spears was widely known in Mainland China among the relevant consuming public before the registration date of the disputed trademark, in this instance November 20, 2000; also, whether the relevant consuming public would be confused as to the source or origin of “布兰妮” or “Britney” as being substantially similar to the name Britney Spears, and thus inferring a relationship between the two parties. 

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Summary of Administrative Case Verdict on “Britney Spears” Trademark Squatting (I)

(By Luo Yanjie) In past posts, we have introduced you to the trademark squatting of Yi Jian Lian, which is the name of a well-known basketball player in China. Today, we are going to show you another similar decision:

On 20th November 2000, Suzhou Yisheng Fashion Co., Ltd. (the “Yisheng Company”) applied for the trademark “布兰妮Britney” in Class 25, covering clothing articles, such as shirts, suits, coats, overcoats, skirts, t-shirts, wind coats and down jackets. The Trademark Office of the State Administration of Industry and Commerce (the “Trademark Office”), after conducting a preliminary examination, published the application on its No. 807 Trademark Announcement. Britney Spears filed an opposition to the Trademark Office within the statutory period.

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