Category Archives: Settlement

Infringing Goods shall not be Determined as Well-Known Goods

图片1

Abstract: Under the circumstances of prior trademark rights on the same goods, determining similar trade name used by another person as the special name belonging to a well-known commodity shall be limited. Furthermore, the courts shall necessarily review the ownership of prior trademark as the fact of a case.

(By Luo Yanjie) The special name belonging to a well-known commodity is a protective approach for an unregistered trademark. In particular, the special name shall have no severability itself; otherwise, it shall be limited. In today’s post, we will introduce a case with this element with the following analysis:

READ MORE

Why Procter &Gamble’s “Pantene” Trademark cannot Obtain Cross-Protection?

图片1

(By Luo Yanjie) Abstract: Only if another trademark would “mislead the public and injure the interests of the registrant of a well-known trademark, the well-known trademark could obtain “across protection”. The court shall apply on leniency protective conditions of “injure the interests of the registrant of a well-known trademark” to cross-protection for well-known trademark.

Generally speaking, the well-known trademark can get the trademark cross protection, in particular, the “cross-category” does not mean that the well-known trademark can obtain only related categories’ protection , not all categories. A case in our today’s post is about a well-known trademark failure to get the cross protection sharing with readers as follows，

READ MORE

Full text of 2013 China Trademark Law

Notice: On August 30, 2013, China issued a new revision of Trademark Law which will come into force on May 1, 2014. We spent a week to translates the new revision of the Trademark Law into English and post it today. If any one needs to reprint our translated revision on web, please note the following content on the reprint page: This law is translated by Bridge IP Law Commentary http://www.chinaiplawyer.com.

                  Trademark Law of the People’s Republic of China

   ( Adopted at the 24th Session of the Standing Committee of the Fifth National People ‘s Congress on August 23, 1982, as amended according to the “Decision on the Revision of the Trademark Law of the People’s Republic of China”  adopted at the 30th Session of the Standing Committee  of the Seventh National People’s Congress on February 22, 1993, and  the “Decision on the Revision of the Trademark Law of the People’s Republic of China” adopted at the 24th Session of  the Standing Committee of the Ninth National People’s’ Congress on October 27 2001, and amended for the third time according to the “Decision on the Revision of the Trademark Law of the People’s Republic of China” adopted at the 4th Session of  the Standing Committee of the Twelfth National People’s’ Congress on August 30, 2013 )

READ MORE

Trademark Law of the People’s Republic of China (2013, Comparison Version)

Noctie: On August 30, 2013, China issued a new revision of Trademark Law which will come into force on May 1, 2014. We spent a week to translates the new revision of the Trademark Law into English and post it today. If any one needs to reprint our translated revision on web, please note the following content on the reprint page: This law is translated by Bridge IP Law Commentary http://www.chinaiplawyer.com.

To help foreign friends better understanding of Chinese laws, today we would first publish a comparison of different versions between the 2001 version and the 2013 version.

READ MORE

An Unregistered Trademark can be Licensed to Another Party for a Fee

Posted on by
图片1

Abstract: An unregistered trademark may lawfully be licensed to another person. If any third party had registered the trademark, the licensor’s actions will constitute a breach of license contract. Except where the licensor has committed obvious fraud, the validity and effectiveness of such a license contract upon unregistered trademarks cannot be denied.

(By Luo Yanjie) Generally, a trademark in a trademark license should be registered before it is licensed to any other party. However, in today’s post, we will discuss a particular case there the trademark licensed was unregistered at the time the license was concluded. After being heard by two courts and the Supreme Court, such a trademark license contract was ruled to be valid. The following is our analysis.

READ MORE

Does Using “Counterfeit Goods” Constitute Trademark Infringement?

Posted on by
1

Abstract: generally, consumers’ acts of purchasing infringing goods are not considered to constitute trademark infringement. However, some limits shall be given by laws and regulations to those that intend to manufacture and sell infringing goods to damage a trademark holder’s legitimate rights and interests. Based on such analysis, we don’t fully agree with the Chinese court’s decision in today’s post.

(By You Yunting) Pursuant to the Trademark Law, infringement refers to “manufacturing and selling” goods or services of a registered trademark without authorization, but does not include consumers’ acts of purchasing and using infringing goods or services. If laws entirely indulge consumers’ infringements, it is not entirely effective in protecting a trademark holder’s legitimate rights and interests. In today’s post, we will discuss a typical case evidencing such legal limitations. Here is our analysis:

READ MORE

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

Posted on by

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:

READ MORE

Why did Chinese Courts Reject Perfetti’s Counterclaim for Unfair Competition?

Posted on by
图片1

(By You Yunting) Perfetti Van Melle Confectionery (China) Co., Ltd. (“Perfetti”) has a well-known candy named Alpenliebe, whose slogan is “浓浓奶香情 Nong Nong Nai Xiang Qing”. “浓浓 Nong Nong” refers to a strong scent, while “浓浓奶香情 Nong Nong Nai Xiang Qing” in English refers to a “strong milk taste,” i.e., the candy is notable for its rather strong milky flavor. A Zhejiang-based company owned the “浓浓 Nong Nong” trademark under the classification for candies, and filed a lawsuit accusing Perfetti of infringement and unfair competition for its use of that slogan. In today’s post, we will introduce relevant legislation on substantiality and procedure in this particular case.

READ MORE

Fair Use of a Registered Trademark does not Constitute Infringement

Posted on by

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.

READ MORE

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

Posted on by

(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.

READ MORE

A Trademark Infringement Dispute Caused by Recycled Budweiser Bottles

Posted on by

(By You Yunting)To save costs, Chinese beer manufacturers have been using recycled bottle to refill beer, and while most large-scale beer manufacturers will engrave their trademarks into their glass bottles, as well as recycle their own bottles. However, for small-scale beer manufacturers, such practices are impractical, and when small beer manufacturers use other larger manufacturer’s bottles with their trademarks, all the ingredients for trademark infringement are present. In today’s post, we will introduce to you two cases heard by two different courts concerning the same issue. 

READ MORE

Why Wallet and Clothes in Different Trademark Classes Would be Taken by China Court as Similar Products?

Posted on by

(By Luo Yanjie) When registering trademark in China, the applicant shall first determine the classification of the trademark to be registered. Class 18 of the Classification of Goods and Services include goods such as leather and artificial leather, goods made from these materials and not included in other classes, cases, travelling bags, and umbrellas. Goods under Class 25 includes clothing, footwear, and headgear. Looking at it closely,  Class 18 is classified by its physical attribute, while Class 25 is classified by the purpose of the goods. Would the two Classes constitute similar goods for any particular product? In today’s post, a specific case would be introduced to analyze this question.

READ MORE

How to Judge the Validity of Trademark Transfer without Inner Approval of the Company in China

Posted on by

(By Albert Chen) Abstract:

When a company’s trademark agent transfers a trademark without approval, a judgement of the validity of said transfer requires not only a consideration of the company approval, but also a determination of the third party good faith in the transfer. When a condition is not fulfilled the transfer will invariably be considered invalid.

Case Introduction:

In 2001, Leidi (China) Co., Ltd. (“Company L”) was granted the exclusive right in the use of the trademark “雷迪” (read as “Leidi” in Chinese). In November of 2002, Wu, as the executive director of Leidi China, transferred the trademark to the Hua Qu Duo Investment Company (“Company H”). The State Trademark Office made an announcement regarding the transfer in October 2003. Subsequently, Company H licensed the trademark to the Shanghai-based Leidi Mechanics Co., Ltd. (“Company S,” which had no affiliation with Company L).

READ MORE

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

Posted on by

(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?

READ MORE

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

Posted on by

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:

READ MORE