(By You Yunting) Recently, Chairman Zong Qinghou of Hangzhou Wahaha Group, acting as NPC representative (NPC refers to National People’s Congress), proposed a draft proposal revising the Trademark Law and strengthening the protection of well-known trademarks. We have previously introduced this case in the article Wahaha Group suing KMPG in China, please read this post for further background information. In my opinion, his draft indicates that Chinese entrepreneurs have already found that the growth of Chinese enterprises will be limited unless they improve the standard of protection offered under intellectual property rights law. However, his draft only focused on the intellectual property rights protection of the Wahaha Group, did not account for the interests of the public, and required special protection for the Wahaha Group beyond conventional protection from the government. As such, his draft is not practical.
Danone established a joint venture company with the Wahaha Group in 1996, with a 51 percent ownership stake of stock in the company. In addition to this joint venture company, the Wahaha Group also operated several separate non-Wahaha joint ventures. In 2007, Danone attempted to offer four billion Yuan to purchase 51 percent of the shares of all non-Wahaha joint ventures, but this offer was rejected. Subsequently, Danone was involved in a series of complex litigation against the Wahaha group in a number of jurisdictions.
The trademark license, as one of the means of using trademarks, has, in practice, encountered many unexpected disputes due to illegal and improper use. How then should one legally and properly license trademarks? And, what may benefits will the rights holder gain after going through the administrative procedures? This essay summarizes the author’s opinions on these issues.
I. How to make the trademark license record
(By Albert Chen) According to the Measures for Recording Trademark Licensing Contracts (“Measures”), the rights holder, either the owner of the trademark or the licensee, or the trademark agency representing these parties shall apply for recordation of the trademark license. If the licensors are foreigners or foreign companies, however, the record must be handled by trademark agencies. In the application, the applicant shall submit the licensing contract recordation application, a duplicate of the licensing contract, and a copy of the trademark certificate. If the documents are in foreign languages, translation shall also be provided.
By You Yunting
As reported (note: the link is in Chinese), the eye-catching trademark battle on Wanglaoji, also known as Wong Lo Kat in Hong Kong, as been adjudicated by Beijing No.1 Intermediate People’s Court on the 13th July 2012, by which Hong Dao Group’s (the “Hong Dao”) appeal to revoke the arbitration decision by CIETAC was refused. This means the arbitration decision shall take effect from 9th May 2012, the two supplementary trademark license contracts signed by the disputed parties are judged invalid, and Hong Dao will no longer use the trademark of Wanglaoji. For the case, we have expressed our opinions in the past post “Will JDB Revoke Wang Lao Ji Trademark Arbitration Award through Litigation?”
By Albert Chen
We posted to discuss what classes shall DOTA like online game to register their trademarks several days ago. In a country like China where the infringement is not rare, it’s suggested to apply the trademark in relevant classes as many as possible, and today we would like to discuss the way to make the strategy on trademark and the advantages and disadvantages of the full-class registration of trademarks.
I. The full registration of trademarks is suggested for the current condition in China
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.