Tag Archives: administrative lawsuit

Why BURBERRY’s Classic Pattern Registered Trademark was Revoked in China？

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(By You Yunting) Earlier in November, China’s Trademark Office announced canceling Burberry’s trademark of the “Haymarket Check” in China, known as iconic tan, black and red tartan (the “disputed trademark”), under Class 18 for packaging and bags because Burberry had not even used the registered trademark for over three years in China by the media.

A Chinese bag and apparel maker Polo Santa Roberta, who had disputes with Burberry for many years, filed an application with the China’s Trademark Office for revoking the disputed trademark that Burberry had not used for over three years. The State Trademark Office decided to revoke Burberry’s trademark due to inadequate evidence from Burberry after consideration, but Burberry applied for review with the Trademark Review and Adjudication Board, triggering heated debates in China.

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Could Milk Powder Manufacturers Win the Lawsuits Against NDRC’ s Vertical Monopoly Penalty?

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(By You Yunting) According to Chinese National Development and Reform Commission’s (“NDRC”) announcement, recently NDRC carried out anti-monopoly investigations into milk powder manufacturers and imposed fines on multiple offenders. When combined this announcement with the second instance court’s decision on Beijing Rui Bang Co., Ltd that was released last week by Shanghai Higher People’s Court, we have seen a sharp difference between NDRC and Chinese courts’ understanding of Article 14 of the Anti Monopoly Law. Therefore, if the punished milk powder manufacturers file an administrative lawsuit against NDRC’s fines, the Chinese court may not necessarily agree with the commission’s decision nor hold the punishment to be legal.

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

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(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.

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

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(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?

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Why Did the Supreme People’s Court Changed Its Attitude towards Revoking Trademarks When It Is Unused for 3 Years

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(By You Yunting) China is a heavily administrated and controlled country. If administrative approval is not obtained, business activity such as producing and selling of Alcoholic beverages, medicine, etc.,  could be ruled to be invalid by the court. According to the Trademark Law of China, once the trademark has not been used for three continuous years, it could be eliminated. There is a significant amount of people who uses their right to their trademark however, many people fail to obtain the proper administrative approval or violates administrative rules. This brings us to the issue of  whether or not such a trademark should be removed even though it has been used. For this kind of cases, we find an example in the 10 annual cases of 2011 promulgated by the Supreme People’s Court of China. In that case, the Supreme Court overturned its opinions expressed in the previous year, “Kangwang Trademark Dispute”, in which the court determined that despite a shortage of administrative approval, the using of the trademark is sufficient according to the Trademark Law. 

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Why Did the Court Verify the Validity of a Company’s Trademark Transfer 5 Years after Its Cancellation?

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(By You Yunting) The Luzhou Qian Nian Liquor Co., Ltd. (“Company L”) found that its competitor, the Shandong-based Zhu Ge Jia Liquor Co., Ltd. (“Company S”) acquired three trademarks from a company that had its registration for the marks cancelled five years prior to the trademark transfer. Following this, Company L filed a request to have the trademark revoked, because it had not been used for a continuous three-year period. However, the Trademark Office denied the application, and Company L requested a review of the decision, which was also rejected, leading Company L to ultimately file an administrative lawsuit. In the lawsuit, Company L was equally unsuccessful, and the court refused its demands in both the first and second instance. Following a series of rejections, Company L then appealed the case to the Supreme People’s Court (“Supreme Court”) for a rehearing. 

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Why China Companies Licensed by Overseas Right Holder Would Still Be Found Infringement?

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(By Luo Yanjie) Abstract: Whether the confusion has been made among the consumers is the basis on which to judge the unfair competition liability. In recent two years, some China companies have engaged themselves in the fake licensing as first to establish a company outside mainland China in Hong Kong, with the same name like those reputed brands and then gain the benefits from the free riding on it. But once it has been judged confusion among the consumer, even it is licensed through the legal procedure, it shall also take the infringement liability.

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How MaoTai and Wu Liang Ye Would Defend Against Vertical Pricing Monopoly Fines ordered by China NDRC?

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(By You Yunting) Abstract: Both Mao Tai and Wu Liang Ye can rely on one of the seven situations in Article 15 of the Anti Monopoly Law for their defense. But, that defense will not be easy because it requires evidence that the relevant agreements will not limit market competitors and that consumers can share the interests produced by the agreements.

In yesterday’s post, the writer analyzed the legal meaning of the punishment ordered by the National Development and Reform Commission (“NDRC”) against two top Chinese distilleries, Mao Tai and Wu Liang Ye. Today’s post will go one step further to describe the way for Mao Tai and Wu Liang Ye can protect their own interests.

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

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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)

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(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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Summary of the Administrative Case Verdict in the Yi Jian Lian Trademark Squatting Case

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We are often consulted by clients asking what standards are used to determine trademark squatting, and why was malicious squatting found against Sony Ericson and HERMES but denied against COCA COLA or LANDROVER? Furthermore, once a trademark application has damaged anothers’ name right, copyright, or trade name right, what standards do courts use to determine infringement. Under the Trademark Law, what measures can be taken to protect the trademarks of well-known fictional figures, such as 007 or Harry Potter?

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Is It Illegal for Amazon.cn Running Kindle Store with A License Borrowed from Business Cooperation?

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(By You Yunting) On the morning of 13th December, to most one’s inexpectation, Amazon.cn launched itsChinese Kindle Store. As indicated in the web page, it is run by Chineseall.com, a licensed online publisher. That hints Kindle reader would come to China soon. And on the eager of Chinese users,a media report on 14th December (Note: the link is in Chinese) claimed Kindle Store has been halted by the General Administration of Press and Publication (the “GAPP”) for its violation against the law.
“Mr. Wang Qiang, the chief of digital publication section of the Science & Digital Publication Department of GAPP said in his interview that Amazon’s Kindle Store is violating the law for its license borrowed from business cooperation”. Also, it is mentioned in the report that GAPP has inquired and investigated Amazon.cn and Chineseall.com, but yet no result is available now. It is obvious that to Amazon’s plan, it would like to settle the license obstacle by using others’ license. In today’s post, we would like to discuss legal issues concerning licenses on electronic book business.
I. What license is necessary for e-book business?
The qualification of e-book business is mainly regulated in department rules of GAPP. Possibly due to a faster development in science and outdated regulations, the rules are actually could not been seen as an official legislature. It is called Opinions on Developing E-book Industry by GAPP. (Note: the link is in Chinese) By its Article 14, the e-book business of Amazon involves the edition, publish and sales of the e-publication, and thereby shall correspondently apply for three licenses.
Before the e-book, the online game industry is also facing the license problem to publishing the user terminal. At then, two ways are mainly adopted by game companies for the acquisition of business license: 1) the game companies with online publish license could directly submit the game to the GAPP for approval in his own name; 2) those companies with no such qualification, they would present the games to the electronic audio and video publishing house and afterwards to gain the e-publication license. But unlike the publish of online game, for which hundreds of games could be run by a single company and they are possible to gain the license through the publishing house, the release of the e-book may involves millions of works, once they are published through publishing house, all their gains may be inadequate for the payment to the publishing house.
II. Why Amazon did not apply for the license directly?
Could Amazon directly apply for the license for online publication? The answer is no. The shareholder of Amazon.cn is Amazon USA, which makes it a foreign invested company. And by the Guideline of Foreign Invested Industry issued by the Ministry of Commerce, the field of video & audio production as well as the electronic publication and making is prohibited for foreign investment. For this reason, Amazon.cn could no apply for the license solely by itself or in its name.
III. What problems for the cooperation between Amazon and Chineseall.com?
According to the page of Amazon’s e-book:
“The e-book store of Kindle is supported by Chineseall.com, Xinchuwangzheng (jing) No.045”. The Chineseall.com is a licensed corporate, and obviously by Amazon’s plan,it would like to settle the problem of license through the cooperation with a licensed company. But to my personal opinion, the current operation model is defected. To my experience, the domain name, server room, software for reading and payment for book purchase of Kindle e-book store are all supported by Amazon.cn, and it has no connection with Chineseall.com, so where could see the support from Chineseall.com? Therefore, it is not groundless in law that the official from the GAPP said Amazon’s operation under others’ license is violating the law.
Before closing, just half month ago, Xiaomi Inc., a private high tech company, released its set top box–Xiaomi Box, which was also halted by the administration. For that, the author has also written two articles to criticize the authority. For this time, the international giant Amazon couters with the same problem in the publish field. However, either Xiaomi or Kindle Store leads the development direction of science and advanced culture. Their experience in the government’s administration could also explain their “advance”, and the outdate of Chinese authority. And by te existing system in China, no judicial relief is available to Chinese companies when in such situation, and they could not file an administrative lawsuit. The main risk for it is the administration supervision could kill the update and upgrade of high-tech products, which would eventually make our science development legging behind the global trend.

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A Recorded High Objection to Mao Tai’s Trademark Application

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By Albert Chen

According to the report, the renowned white liquor distillery Mao Tai’s application of the “Guo Jiu Mao Tai” trademark is facing a recorded huge amount of objections. Since the announcement of its preliminary examination on 20th July, it has seen totaled 95 objections to the applied 4 marks within the 3-months publication. And the objectors have been more than 40 units or individuals. For the case, we once posted an essay on its analysis: “Will Alcohol Trademarks Implying Them the State Liquor Be Registered in China?” For more details of the analysis, please check today’s post.

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Will Alcohol Trademarks Implying Them the State Liquor Be Registered in China?

By Albert Chen:

By the latest trademark gazette of State Trademark Office of China on 20th July of 2012, “Guo Jiu Mao Tai”, which implies it the state liquor, has come through the preliminary examination and has been published. The news soon agitated the argument among the industry and academic circle, and other brewers like Feng Jiu (SSE:600809) and Luzhou Laojiao (SZSE: 000568) have all expressed their oppositions on it and planed to block the registration of “Guo Jiu Mao Tai”.

As retrieved on the state trademark website, I find it’s not the trademark’s first application. Early in 2011, the applicant China Kweichow Moutai Distillery Co., Ltd (the “Maotai Company”) tried to register the trademark, yet it was refused by the authority and the same for the follow on 5 applications. The current preliminarily approved marks are concentrated in Class 33, covering the fruit wine, Bitter, wine, aperitif, spirit, and alcohol beverage excluding beer, etc.

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How to Make Administrative Complaints against Knockoff Software in China?

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By Luo Yanjie

According to China “copyright law”, commercial using pirated software is a typical act of infringement. We generally recommend the right owner taking civil action against pirates. But in many cases, administrative complaints against them will be more efficient because it is hard to get “evidences”. Today, we would like to introduce how to start a copyright infringement complaint inChina.

I. Legal basis of administrative complaints to pirates users

The current “copyright law” article 47 provides:“Any of the following acts of infringement shall, depending on its circumstances, be demanded for civil responsibility such as cease of the infringement, elimination of effects, public apology or compensation for loss; if the act causes a damage to the public interests simultaneously, the copyright administration department may order the person committing the act to stop the act of infringement, confiscate his illegal gains, confiscate and destroy the infringing copies and impose a fine thereon; if the circumstances are serious, the copyright administration department may also confiscate the key materials, tools and equipment mainly used for making infringing copies; and if the act constitutes a crime, criminal responsibility shall be demanded according to law”. This is the law basis for China Administration of copyright administrative punishment. In addition, the” Regulations for the protection of computer software” article 24 also make similar provisions in the light of computer software tort ( similar with ” copyright law”, repeat no longer here ). And” Decree of the National Copyright Administration of the PRC ” also provides the jurisdiction of an administrative copyright complaint case belongs to the State Copyright Bureau and the local copyright bureau, and make detailed provisions of legal procedure.

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