Tag Archives: trademark revocation

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

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(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 there from, 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 of “authorized” . Our website once analysed the issues concerned in the post “Whether Sales Agents Are Included in the Trademark Agent Squatting Articles of China Trademark Law”. In today’s post, we would like to introduce the opinions of the court from a different aspect. The details are as follows:

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Does a Previously Registered Noted Trademark Influence Subsequently Registered Similar Trademarks?

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Abstract

(By Luo Yanjie) In determining the similarity of two trademarks, one must take into account the common understanding among the public as to the trademark and the goods it presents (as well as the source), and the public’s comprehension of the words, pictures, designs, or a combination of all of the above. Concurrently, however, the reputation of the trademark must be taken into consideration in order to determine whether the above factors would lead to confusion as to source among the relevant consumers and market. Generally, trademarks are judged by their similarity with the appearance of another trademark; however, in the following described case, the second instance court also considered the reputation of the reference trademark and the understanding of the consumer in relation to a more comprehensive protection of a well-known brand. The significance of the case is primarily that, due to the millions of trademark applications made in China each year, even subsequently registered trademarks that are incredibly similar to those previously registered may be approved for commercial use by the China Trademark Office, due to strained and restricted resources on its part. In any case, the trademark involved in this case is a well-known one, and for this reason, the court decided that the subsequently registered mark would not be approved for use.

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Would the Cancellation of the Applicant Lead to the Invalidity of Trademark Application in China?

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(By Luo Yanjie) Abstract: trademark application may take a long time. If the applicant encounters any change on its subject qualification, it shall handle the trademark transfer procedure as soon as possible, or otherwise the trademark could be cancelled.

It normally takes about one year from submitting the trademark application to the right granting. If during the application process it encounters any opposition, the time it takes for right granting adjudication would be much longer, possibly extending to several years. While during that period, the applicant may face a change on its subject qualification, and then will the trademark application be influenced in such a situation? In today’s post, you will see a typical case that we would like to share it with our readers.

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When Can a Trademark Be Applied for Following the Cancellation of A Similar Mark in China?

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(By Luo Yanjie) Article 46 of the Trademark Law has regulated how long one must wait until a cancelled or revoked trademark can be reapplied for, and yet due to the complexity of the application procedures, in the process of applying, an applicant could easily be confused or mistaken.

Case Summary

On January 13, 2003, Wang Huilan applied for the registration of a design trademark, numbered 3432984, specifically for Class 18, which includes both bags and briefcases. On July 1, 2004, the Trademark Office under the State Administration of Commerce and Industry (the “Trademark Office”) issued a Notice of Trademark Application Refusal, stating that the applied trademark was similar to already registered ones, and thereby Wang Huilan’s application was refused. Dissatisfied with this result, Wang filed a review application with the Trademark Review and Adjudication Board (the “Board”). In July 2007, the reference trademark judged in Wang’s application was cancelled. On August 22, 2007, the Board refused the review application. Ever more dissatisfied with this decision, Wang filed an administrative lawsuit.

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

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A0132

 (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:

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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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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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DOTA: Which Trademark Classes Shall Apply for Online Game in China?

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By Albert Chen

By the local news report in China, at the settlement of the dispute between Blizzard and Valve on the DOTA trademark (Please CLICK HERE for our past post on it), a new battle over “DOTA” has begun. A local registered company in Shandong Province in East China recently lettered to online shopping website like Taobao.com, claiming it has full right to use the trademark of “DOTA” in class 25, which covering clothes, shoes and hats. Also, the company presented the certificate to the trademark right with the letter. Therefore, the company accused the websites the infringement for selling the clothes with DOTA marked on it. For the news, we retrieved the database of Trademark Office of PRC, and by the check, the trademark does belong to Wang Yongbao, the name indicated on the certificate, while it remains unknown through which methods does the company get the license to use the trademark from Wang. Meanwhile, it also comes to our attention that, in addition to Wang, the trademark of DOTA has been registered under other individuals or units’ name in different classes, involving Zheng Miao in Class6 and Ningbo Jiangbei District Dong Tai Clothing Co., Ltd., in Class 26, etc.

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The Interpretation on the Ceased Use for Three Consecutive Years in China Trademark Law

It’s regulated in China Trademark Law that when the registered trademark is ceased for use for three consecutive years, the trademark office shall order him to rectify the situation within a specified period or even cancel the registered trademark. And the understanding on the ceased use is the most consulted question to us. In fact, such article was once referred in the administrative adjudication made by the Supreme People’s Court of China, and that may help us in understanding the article.

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