—How to Comprehensively Protect Application for Famous Brands’ Trademarks
Recently some Chinese media have reported that many B2C websites such as 360buy are selling the alleged knockoff UGG snow boots. The Deckers Outdoor Corporation (the “Deckers”), the manufacturer of UGG Australia, claims its exclusive ownership of the UGG trademark and those boots promoted and sold in the name of UGG but without its license are counterfeits. In today’s post, Bridge IP Law Commentary would analyze the dispute of UGG trademark by relevant China laws and regulations.
The trademark dispute focuses on the essence of UGG, a product trademark or a generic name of products. And it’s also argued on Wikipedia that UGG is a generic term of boots made by the sheepskin original from Australia or a trademark owned by the Deckers. Moreover the Wiki page of UGG is currently protected due to the conflict. In our opinion, according to the Chinese trademark laws and regulations, UGG can be used in any snow boot if it is a genetic name, otherwise, such using could be the trademark infringement.
In order to clarify the facts, Bridge IP Law Commentary has made a retrieval based on the information disclosed on the website of the China Trademark Office (the “Trademark Office”), according to which, we finds the UGG trademark has already been registered on footwear in China in 1994, which was afterwards transferred to Deckers in 2005 and successfully renewed on 20th June 2005. However, the trademark now is in trademark dispute, as provided in the Chinese trademark laws and regulations, any third party ,who claims a registered trademark infringes his/her rights obtained by priority, or a trademark has been used by him/her and has become influential is squatted by others, or other trademark disputes over a registered trademark, can request the Trademark Review and Adjudication Board to revoke the registered trademark within five (5) years from the day on which the trademark is registered, but the owner of a famous trademark shall not be subject to the 5 years limit on request the revocation of bad-faith registration.
In addition, we find the Deckers have also applied two trademarks on footwear, one is applied on 2nd February 2010 and the other is applied on 28th January 2008. The former hasn’t passed the preliminary review, neither accessed to announcement, and the later has been rejected by the Trademark Office, accordingly the Deckers has applied to the Trademark Review and Adjudication Board for re-examination. Furthermore, the Deckers also applied the “UGG Australia” .
The more interesting point is that, as retrieved, we additionally find many similar trademarks are applied by many Chinese individuals and enterprise for registration in recent, which however hasn’t passed preliminary review yet.
Surely, Deckers shall gain the exclusive trademark right of UGG in China if it could win the competitors in the administrative litigation concerning trademark revocation and trademark litigation, which on the other hand could not exclude the possibility of the trademark revocation. As to the squatting of the similar trademark mentioned above, it’s suggested to foreign companies to apply for all-class-relate registration.
The all-class-relate application has two parts:
First, the important trademarks shall be applied for registration in all the 45 classes;
Second, the similar trademarks shall also be applied for the important classes.
According to our retrieval, Deckers has already applied for all classes, while no application on similar trademark has been made. Actually, the local enterprises in China have much more experiences in such aspect, for example, Hangzhou Wahaha Group Co., Ltd., the owner of the Wahaha trademark (娃哈哈), has applied the Hahawa trademark (哈哈娃) and Hawaha trademark (哈娃哈), thus prevents the free-rider of the competitor to the largest extent. We advice Deckers apply UCG, UGC, UCC and other similar trademark for registration on the footwear and clothing.
Of course, some readers may ask is it possible that a all-class registered trademark not used in some classes for continuous three years be cancelled by the Trademark Office, as regulated in China Trademark Law. Bridge IP Law Commentary thinks it is theoretically possible from the perspective of theory, but the regulation mainly focuses on the prevention of squatting, therefore, the cancellation could be avoided with preparation in advance by the trademark owner.
On the procedure, the cancellation of the unused trademark shall be applied by the third party, and the trademark office shall notice the trademark registrant on receiving the third party’s application and also require the registrant to submit, within two months of the receipt of the notification, evidences proving the registered trademark was used or transferred before the revocation application is filed, or to state legitimate reasons for non-use; if the registrant fails to provide the evidence within the time limit, the Trademark Office shall revoke the registered trademark and make an announcement, from the date of which, the exclusive right to use any such trademark. However, according to the practices in China, the relevant samples used the registered trademark or records like the advertisement contracts could be taken against the cancellation application.
Please refer to the following links for more posts on Chinese trademark laws and regulations:
- The Actual Term of Trademark Registration in China
- The Easy Way to Reduce the Cost of International Trademark Application
- How to Apply for the Trademark Record in China Custom
- How to improve the success rate of trademark registration in China?
- Matters for Attention in Trademark Refusal Review in China
Author: Ms. Chen Danhong
Attorney-at-law of DeBund Law Offices
Co-author: Mr. You Yunting
Founder & Editor-in-Chief of Bridge IP Law Commentary
Partner & Attorney-at-law of Shanghai DeBund Law Offices
Email: Bridge@chinaiplawyer.com, Tel: 8621-5213-4900,
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Bridge IP Law Commentary is a website focus on the introduction of commercial laws in China, especially the intellectual property laws. All the posts here are our original works. And all news or cases referred here are from public reports, and our comments or analysis are of due diligence, neutrality and impartiality, representing our own opinions only and are our original works. You may contact us shall you have any opinions or suggestions.
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