Non-litigation Archives - Page 4 of 9 - Bridge IP Law Commentary

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

Posted on April 30, 2013 by yytbest

(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.

Is It Illegal For Directors in Company to Squat Trademarks in China?

Posted on April 24, 2013 by yytbest

(By Luo Yanjie) As regulated in Article 15 of the Trademark Law:

“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.”

But in judicial practice, the agent or representative has a very vague definition and limit, and interpretation regarding the meaning of “authorized” is currently in dispute. Our website once introduced and analyzed the issues concerned in the post “Whether Sales Agents Are Included in the Trademark Agent Squatting Articles of China Trademark Law”, and in today’s post we would like to introduce the opinions of the court having analyzed the case from a different aspect. The details are as follows:

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

Posted on April 20, 2013 by yytbest

(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 “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.

How Does the US Government Determine Whether the Parallel Import of Trademarks Is Legal？

Posted on April 15, 2013 by yytbest

Record III of the Visit to New York

(By You Yunting) From late of March, the author visited the US at the invitation of the US government in order to get a better understanding of how the US IPR system operates. On Monday of the second week there, the author visited Wiggin and Dana LLP and Pryor Cashman LLP, two New York law firms. The law offices visited on that day were all in New York’s central business district and had spacious offices, with luxurious decorations, and the view outside was all of beautiful river scenery or of the Apple Countdown. The following is the record of that day’s visit.

How Does the Federal Trade Commission Decide Whether Intellectual Property Licenses Violate Anti-trust Laws?

Posted on April 9, 2013 by yytbest

Day Five of the US Visit II

In late March, the author had the opportunity to make a journey to the United States at the invitation of the U.S. government in order to better understand how the US intellectual system operates. On the fifth day of the visit, the author went to the Federal Trade Commission (the “FTC”), and the following is a brief record of his visit there.

The FTC is the administration in charge of investigating and taking action against unfair competition and anti trust in the US. During the visit, FTC officials showed us a map showing that as of 1900, only the US and Canada had enacted competition laws, including unfair competition law and the anti trust law. Later by 1960, Sweden, France, and Japan passed legislation on competition. By 1980, many countries in Europe and South America passed competition laws, as well as Australia, India, Thailand, and South Africa. By 2012, almost all states of the world had laws in that field, except for a few African countries.

What Chinese Intellectual Property Legal Issues Are American Companies Dissatisfied With?

Posted on March 26, 2013 by yytbest

Day three of the visit to the United States

(By You Yunting) Beginning at the end of this March, on the invitation of the US government, I visited America with the goal of understanding its IPR system. On my third day in the US, I visited the Pharmaceutical Research and Manufacturers of America (“PhRMA”), the United States-China Business Council (“USCBC”), the United States Patent and Trademark Office (“USPTO”), and the East Asia Bureau of the US Department of State. The following is the brief record of my meetings on that day.

How does the U.S. Government Guide Companies Registering IPR in China?

Posted on March 22, 2013 by yytbest

(By You Yunting) This March, at the invitation of the U.S. government, Mr. You Yunting, the founder of Bridge IP Commentary began his journey to the United States. The main purpose of this visit was to better understand the system of intellectual property rights in the United States. Mr. You would like to share with our readers his experiences there in several posts here on our website. Of course, the content of the posts may not be truly comprehensive or strictly accurate; that being said, if you find any mistakes or comments that can be corrected or improved upon, please let us know. We encourage more dialogue with the IPR community and welcome all constructive commentary. The following is the first post in a series of Mr. You’s visit to the United States:

How to Determine the Recognition Level of Products in Unfair Competition Disputes in China, II

Posted on March 19, 2013 by yytbest

Comments on the unfair competition case between Ferrero and Jinsha

Today, we will share our opinions on the following issues related to the case introduced in yesterday’s post: the scope of name recognition, whether a product’s packaging can refer to the products of others, and protection over product packaging through the use of trademarks.

Lawyer comments:

The interpretations of the judges in the first and second instance courts and the review court help us better understand the following issues involved in unfair competition cases:

How to Determine the Recognition Level of Products in Unfair Competition Disputes in China, I

Posted on March 18, 2013 by yytbest

Comments on the unfair competition case between Ferrero and Jinsha

Today and tomorrow, we will analyze several issues raised by the Ferrero and Jinsha unfair competition
case. Namely: the scope of name recognition, whether a product’s packaging can refer to the products of others, and protection over product packaging through trademark protection. Today, we will briefly introduce the case facts and the opinions held by the deciding courts.

Case summary:

Ferrero Company registered the trademark “FERRERO ROCHER” in China in 1986 and its FERRERO ROCHER chocolate (“Ferrero Chocolate”) entered the Chinese market in 1988. The Ferrero Chocolate packaging has the following features: 1) gold, ball-shaped foil wrapping; 2) the “FERRERO ROCHER” trademark printed as a decoration within an oval on the gold foil; 3) each chocolate wrapped in gold foil is padded with additional brown paper; 4) outer packaging is made of transparent plastic, so that the inner gold-wrapped balls can be seen from the outside; and 5) a red ribbon-like decoration printed on the trademark of the chocolate.

Analysis of the Assumption of Liability for E-Merchants in IPR Disputes in China, II

Posted on March 9, 2013 by yytbest

—Interpretations on Solutions to Several Issues in Hearing E-Commerce IPR Infringement Cases

In today’s post we will continue to discuss the standards to be considered in determining the liability of e-merchant platforms.

III. Standards in Determining the Indirect Infringement Liability of E-Merchant Platforms

As discussed above, an e-merchant platform may only assume indirect infringement liability under the law, and therefore it would not be necessarily always be liable for infringement occurring on its platform. The pressing question then, is what standards shall be utilized when determining their liability? In response to this question, we would like to share our analysis based on a comparison of similar statutes:

Analysis of the Assumption of Liability for E-Merchants in IPR Disputes in China, I

Posted on March 8, 2013 by yytbest

—Interpretations on Solutions to Several Issues in Hearing E-Commerce IP Infringement Cases

(By Luo Yanjie) In recent years, E-Commerce in China has thrived along with the development of online shopping. According to some news reports, the volume of the transactions from 360buy.com totaled more than RMB sixty billion Yuan, and Suning’s online sales achieved a comparatively paltry RMB 18.336 billion Yuan. With respect to Taobao.com and its affiliated websites, their business gains have vastly superseded all other rivals. By November 2012, Taobao.com and Tmall had sales of over RMB 1000 billion Yuan, which is almost three times that of Bailian Group, Suning and Gome’ s annual income in 2011 combined. The aforesaid three companies are currently the top three retail chains in China.

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

Posted on February 19, 2013 by yytbest

(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:

Why Pfizer Did Not Win the Blue Pill Trademark Infringement Case?

Posted on February 9, 2013 by yytbest

(By Luo Yanjie) Pfizer is the holder of a blue, diamond-shaped mark (the “Pfizer trademark,” number: 3110761). The trademark was approved in Class 5 for pharmaceutical preparation, medicines made for human consumption, antibiotics, medical nutrition supplements, cleaning agents, and veterinary preparation. The registration period for the trademark commenced on May 28, 2003 and will expire on May 27^, 2013.

On July 21, 2005, Pfizer representatives purchased a box of medicine priced at RMB 50 yuan from the New Concept Company. The medicine was mainly intended to cure “erectile dysfunction.” The front and back cover of the package contained both “Viagra”[1] and “TM,” which was underlined and accompanied by the diamond image. The manufacturer was printed as “Jiangsu Lian Huan Pharmaceutical Co., Ltd” (“Lian Huan”) dated on April 14, 2005. The opaque inner packaging also contained the words “Viagra” and “TM,” as well as the manufacturer “Lian Huan.” The packaging of the medicine was also diamond-shaped, in accordance with the shape of the tablet. The medicine itself was light blue in color, diamond compass shaped, and contained the words “Viagra” and “TM.” Pfizer believes that these products constituted three-dimensional trademark infringement and thereby sued the manufacturer and seller.

Analysis on Proof Requirements in Figurative Trademark Infringing Others’ Copyright Cases by China Court

Posted on January 31, 2013 by yytbest

— A trademark certificate cannot be taken as evidence of copyright ownership

(By Luo Yanjie) On June 27th 2002, Hua Yuan Company (hereinafter “Hua Yuan”) filed an application to revoke the disputed trademark “老人城LAORENCHENG” (hereinafter Lao Ren Cheng) pursuant to on Article 31 of the Trademark Law, with the claim that the trademark infringed upon Hua Yuan’s first rights in the mark. The disputed trademark was applied in Class 25 with registration number 1497462. During prosecution of the trademark, Hua Yuan submitted certificate of the No. 590673 trademark and No. 696935 trademark as evidence of its first rights in the mark. As indicated by the documents, the trademarks were registered before the trademark “Lao Ren Cheng.” Considering the opposition was mainly filed on the ground that Hua Yuan’s first rights had been infringed rather than due to similarity of the trademarks, the focus of this particular case depends on whether a trademark certificate may be treated as evidence of trademark ownership.

“Do Not Hire Agreements” among Google, Intel, Apple and Other Tech Firms Violates Chinese Laws?

Posted on January 30, 2013 by yytbest

(By You Yunting) As reported, the CEOs of tech giants Apple, Intel, and Google might be forced to go to court to account for mutual unwritten agreements about not soliciting each other’s workers for employment. These cases started due to the dissatisfaction of relevant employees, who believed that such “do not hire agreements” damaged that legal rights and interests. The news has also revealed emails from former Apple CEO, Steve Jobs, threatening Palm and Google and demanding that they stop using headhunters to obtain the email addresses of Apple employees. This news also raised the concerns within the industry.

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