Tag Archives: trademark application

How Large Is the Scope of Protection for Well-Known Trademarks in China? (II)

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In yesterday’s post, we introduced trans-class protection for well-known trademarks and the factors that might lead to this status being granted. Today, we would like to conclude by explaining situations in which well-known trademarks will not be granted trans-class protection.

III. Situations where trans-class protection will not be granted to well-known trademarks

As discussed above, well-known trademarks only enjoy trans-class protection when meeting the following conditions. Now, we will introduce some common situations where trans-class protection cannot be achieved:

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Could Nike Get the Trademark “Liuxiang”?

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(By Luo Yanjie) Recently, the lawsuit filed by Nike against China’s Trademark Review and Adjudication Board (“TRAB”) (note: the link is in Chinese) was heard in the Beijing No. 1 Intermediate People’s Court. The case was brought because TRAB refused Nike’s application to trademark Liu Xiang (刘翔) for the reason that the trademark had been registered by another company twenty six years ago, namely in July of 1986. At that time, a company named Shanghai Liuxiang Company applied for the trademark Liu Xiang Brand (刘翔牌) in the class of clothing, and the exclusive period for the use of that mark will last until 2017. Incidentally, the Liu Xiang Brand trademark happens to have the same name as the famous Chinese athlete, Liu Xiang. The case is currently being heard, but the author believes Nike has little chance of winning the case. Today’s will examine the issues involved in this case.

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How to Acquire the Trademarks of Companies Whose Business Have Been Canceled or Whose Licenses Have Been Revoked in China?

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By Albert Chen

Trademark assignees may sometimes encounter an awkward situation: the target trademark is in the hands of a company that has had its business license revoked or that has been cancelled. Although the trademark is still valid, others seem to have no legitimate means to acquire it. So, under these circumstances, does the assignee really have no means to acquire the trademark? In today’s post, you will find the answer.

I. Why would trademarks be left unused?

According to relevant statistics, the average life of Chinese companies is seven years, and the average of life of privately owned companies is only 2.9 years. On the other hand, however, the validity period of a trademark is ten years, and there is nothing in Chinese law that states that the trademark shall automatically become invalid when the business license of its holder is revoked or the company is cancelled. Especially when the business license has been revoked, the company still has legal capacity. It is merely incapable of conducting civil acts, including the use and transfer of trademarks, because its business license or chop has been announced invalid or has been confiscated under the punishment of business license revocation.

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What Geographical Names Can be Registered As Trademarks in China?

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It is reported that (Note: the link is in Chinese) Wakayama County of Japan recently announced that the trademark application for “Ji Zhou” (纪州) filed by a Hong Kong company on the Chinese mainland concerns a publicly well-know geographical name. The County has also filed an objection with the Chinese Trademark Office because this name is not appropriate to serve as a trademark. The report also stated that Wakayama County has been paying close attention to trademark applications in China since 2010 and has already had two objections granted against trademark applications for “Wakayama.” Today, we would like to discuss whether geographical names can be registered as trademarks:

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Does Chinese Trademark Law Permit the Coexistence of Identical or Similar Trademarks?

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Last year, the Supreme People’s Court issued the final decision in the protracted dispute between LACOSTE and CARTELO. The decision clarifies cases involving long brand history and could guide future hearings on similar disputes in courts of all levels. In the decision, LACOSTE lost the lawsuit, and no infringement was found on the part of CARTELO. In the judgment, the Court took the first steps towards establishing a system of “trademark coexistence,” which means the coexistence of similar trademarks in the same class, for use in China’s trademark cases. Today’s post will provide an analysis of the application of this system in China.

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How to Decide Infringement When Conflict between Trademark and Trade Name in China?

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By Luo Yanjie

As two different concepts in law, trademark plays the role as to distinguish the origin of the product or services, and the trade name is the literal expression to indicate different companies. But in the daily operation, we may see the confusion between these two concepts, and the trade name may also be used as kind of mark in business. Naturally, we see many companies choose to register their name as the trademark. Despite the similar function of them, the trademark and trade name are verified by different administrations (the mark is subject to the administration of trademark office, and the trade name is ruled by local administration of industry and commerce), but that also triggers the conflict between two objects. In today’s post, we would like to analyze the conflict occurred when trade name registered prior to the trademark by different subjects.

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Could Bolt’s Portrait be Used in Trademark?

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By Albert Chen

The fastest man Usain Bolt continued his legend in London Olympics by claiming 3 gold medals, accompany with his record, Bolt’s celebration gesture also impresses the spectators. But in recent, a company from China’s Liaoning Province (the “Liaoning Company”) applied sprinter’s celebration gesture as his trademark.

The trademark applied by Liaoning Company is the combination of a black sportsman in yellow jersey and Bolt’s iconic victory gesture on the left half, and the Chinese character of “Real Hero” on the right side (the “Real Hero trademark”). There are three classes have been applied this time, among which the application in Class 43 has been rejected for others’ first registration, the application in Class 25 was approved and that in Class 28 is facing the opposition from Bolt’s team.

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Will Lashou Lose its Trademark Battle after Apple?

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—Analysis on Lashou trademark dispute

By Luo Yanjie

According to a recent news report (note: the link is in Chinese), Lashou Company, the largest daily deal website in China, owns the right of Chinese trademark “拉手网”, but the English trademark “lashou” is owned by “Shenzhen Harmonious Network Limited ” (the former Shenzhen Qiandao Ecommerce Ltd, hereinafter referred to as Shenzhen company) who applied the trademark in February of 2012, 2 months earlier than Lashou company. Shenzhen declared that the company may defend its legal interests. In addition, due to the “lashou” trademark is now of the ownership of the Shenzhen company, we have also noticed the concerns of the continuing use of lashou.com by Lashou Company.

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Could There Be Any Improvement on Facebook’s Trademark Application Strategy in China?

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Why the Acuvue of Johnson & Johnson Encounters Trademark Dilusion?

The State Food and Drug Administration of China (SFDA) recently released the news on its website that the colorful plain contact lens will be put into administrative supervision over medical equipment (the “News”). Though the equipment is referred as the “colorful plain contact lens”, while it’s reported by media in the name of “Acuvue/Acuvue” (the “Acuvue”, means beautiful sight in Chinese). Afterwards, Johnson & Johnson (NYSE: JNJ), the manufacturer of “Acuvue”, stated that the words are the exclusive trademark of it, and only the contact lens with cosmetic effect could be called as “Acuvue”.

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China Trademark Application Examination Period Decreased to 10 Months

As reported by Xinhua.com, it was released on the China Industry and Commerce Administration Conference on 26th, December, 2011 that the trademark examination period is further shortened to the current 10 months calculating from the documents submitting to the examination due, and on the other hand, the trademark opposition and dispute hearing could be finished within 18 months, which has reached the level of U.S.A and Japan.

For the rapid development in the economy, the trademark application in China surpassed the annual examinable amount around 2000, which then led to the overstock. And the examination period was prolonged to more than 3 years by the end of 2007. On that account, the administration took series measures to promote the process, and consequently, the examination period was reduced to less than 1 year by the end of 2010.

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Matters for Attention in the Trademark Opposition

Recently, the Qiaodan Company (Qiaodan is the pronunciation of Michael Jordan’s name), a Chinese domestic sporting goods manufacturer, confronted trademark troubles on IPO in China, because Nike has opposed to 8 trademarks of Qiaodan, claiming that it might lead to the confusion with Nike’s “Air Jordan”. Nevertheless, such opposition was refused by China Trademark Office, and Nike filed no administration lawsuit afterwards.

The opposition filed by Nike to Qiaodan is based on the provision of the China trademark law:

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Matters for Attention in Trademark Refusal Review in China

It is reported that the British Lotus who will adopt “路特斯”, the transliteration of Lotus in Chinese, as its local brand in China due to a Chinese domestic company first registered the trademark of “Youth Lotus”. It’s also mentioned in the report that British lotus lost the trademark though it should have the chance to get it through the trademark refusal review. Today, Bridge IP Law Commentary will introduce you the system of review on the trademark refusal in China.

As regulated in the Article 32 of China trademark law:

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How to Apply for the Trademark Record in China Custom

Highlight: You could get to know the effective way of combating infringing product by trademark record in China custom in today’s post.

As reported by xinhuanet.com, the first instance of the knockoff brand product case with the biggest amount involved in recent was heard. The suspect of the case purchased the knockoff LV, Adidas, LACOSTE and other brand products for export, afterwards the knockoffs were detained for the suspicious infringement basing on the recorded trademark by the customhouse after the inspection, and finally the products were appraised fake with the market value of more than 230 million yuan.

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McDonald’s Lost the First Instance of the Trademark Administrative Lawsuit against Wonderful

We once reported the administrative refusal on Mcdonald’s opposition on Wonderful’s trademark (the W trademark) which is similar to Mcdonald’s “M” trademark (you may check the details in How Could McDonald’s Beat Free Rider of Trademark in China?). After that, Mcdonald’s initiated the administrative lawsuit on the refusal.

According to Beijing Morning Post’s report on 10th December, Beijing First Intermediate People’s Court judged on the first instance of the administrative lawsuit, refusing the claims of Mcdonald’s.

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