Speech: Protect Your Brand in China

Part One

Some Suggestions for Trademark Registration in China

 

 

1.  File Trademark Application in time

|          The territory trait of trademark right  

|          Principle of first to register

 

 

Case 1

One Germany company appointed a Chinese company as an authorized distributor of the products bearing its own logo. Without permission of the German company, the authorized distributor filed an trademark  application for this logo. This act has caused severely negative effects on the marketing of the Germany company.

 

 

Case 2  Trademark Infringement Case in respect of “蓝色风暴

A wine company in Zhejiang Province was granted the trademark right of “蓝色风暴  for the goods of beer, cola etc.

Later, they found a world famous drinks company used “蓝色风暴” in the promotion, ads and package of its cola products.

 

The judgment:

The court held that the drinks company had spent a large amount of money on the promotion of “蓝色风暴” for so long time. As a matter of fact,  蓝色风暴” became a trademark of the drinks company. For this reason, the court held this acts is an infringement of the exclusive right regarding “蓝色风暴” of the Zhejiang wine company. 

 

 

2.  Keep in Conformity with Chinese Language Habits and Customer Habits

|          Trademarks are suggested to be Chinese words 

|          Easily-identified, easily-memorized

|          Words that are familiar to or are recognized by the customers

 

 

Case 3  Lexus

Lexus is a famous brand of Toyota. Before Toyota sold Lexus in China, it was translated as “凌志” but has not been registered. When Toyota began to sell Lexus in China, the brand name had to be changed into “雷克萨斯”, because “凌志” had been registered by someone else.

 

 

Case 4   索爱” Trademark Case

One person filed trademark application for “索爱” and was granted exclusive right to this trademark  in 2004. One year later, Sony Ericsson company filed a request for cancelation of this trademark, but the request was  not supported by the Trademark Review and Adjudication Board  and the court.

 

 

3.  The Registration Shall be Under the name of the Holding Company

Purpose:

|          Centralized management of intangible assets

|          Transfer of Loyalty

|          Avoid being involved to liquidation or other relevant procedure of the WFOE or JV

 

 

4.  The Registration Shall Cover Similar Goods

Purpose

|          Prevent from registration in similar goods by others

|          Prevent from potential trademark infringement

 

 

Case 5

A clothing company registered its logo in China for goods of clothes. Later the company found someone else used the same logo on glasses. Because their trademark application doesn’t cover glasses, the clothing company failed to claim for damages or stop such sales.

 

 

5.  Keep in Conformity with the Trade name and Domain name

Purpose

|          Prevent from registration by others and customers being confused

|          Prevent from potential trademark infringement

 

 

Part Two

Remedy of Trademark Infringement

 

 

1.  Customs Protection of Intellectual Property Rights

Put on record → Apply for detaining of suspected infringing goods → Investigation of Customs→Make the decision

 

 

2.  Measures for Administrative Protection of Trademark

Report →Negotiation→Make a decision by Administration Bureau for Industry and Commerce →administrative proceedings civil proceedings 

 

 

3.  Judicial Protection of Trademark

Laws and Regulations:

|           Trademark Law of PRC,

|           Interpretations of the Supreme People’s Court on Several issues concerning the Application of Law to the Trial of Cases of Civil Disputes over the Trademarks

 

1Jurisdiction

|          Where the infringing acts take place

|          Where the infringing goods are stored or detained

|          Where the defendant is domiciled 

 

2The concerned parties

As plaintiff

|          Trademark registrant

|          licensees under sole licensing contracts

|          Licensees under exclusive licensing contracts can bring a joint suit together with the trademark registrant and can also bring a suit by themselves if the trademark registrant does not bring a suit

|          Licensees under non-exclusive licensing contracts , provided that they have been given clear authorization to do so by the trademark registrant

 

As defendant

|          Producers of infringing goods

|          Sellers of infringing goods

|          Who counterfeit, or to make, without authorization, representations of a registered trademark of another person, or to sell such representations

 

3Infringing acts

|          To use a trademark that is identical with or similar to a registered trademark in respect of the identical or similar goods without the authorization from the trademark registrant;

|          To sell goods bear a counterfeited registered trademark;

|          To counterfeit, or to make, without authorization, representations of a registered trademark of another person, or to sell such representations of a registered trademark as were counterfeited, or made without authorization;

|          To replace, without the consent of the trademark registrant, its or his registered trademark and market again the goods bearing the replaced trademark

|          To use the words identical or similar to another’s registered trademark as a trade name in a distinctive manner on identical or similar goods, and thus causing possible confusion among the relative public;

|          To copy, imitate, translate another’s well-known registered trademark or its dominant part to be used as a trademark on non-similar or non-identical goods and thus mislead consumers and possibly causing damage to the interest of the well-known trademark  owner;

|          To registrate words identical with or similar to another’s registered trademark as a domain name, and to conduct e-commerce in the goods through this domain name, which is likely to cause confusion among relative public

|          Other infringing acts.

 

4The Evidence Shall be provided

|          A legitimate and effective certificate of trademark ownership or authorization

|          Evidence of infringing actssuch as the  process of purchase of infringing goods, the infringing goods

|          Evidence of the claim for damages.

 

5Calculation of Damages

|          The profit that the infringer has earned because of the infringement in the period of the infringement;

|          The injury that the trademark registrant has suffered from the infringement in the period of the infringement;

|          The appropriate expenses of the trademark registrant for stopping the infringement;

|          An amount of damages of no more than RMB 500, 000 Yuan.

 

 

Case 6  立邦” Trademark Cases

Conflict between trademark and trade name

A company registered “立邦” as its trade name. Nippon Paint company then brought a suit against this company.

Finally, the court held the use of “立邦” as trade name violated the exclusive right of Nippon paint company and the trade name shall be changed to the words other than “立邦”.

 

 

Conflict between trademark and domain name

Nippon Paint company found that one person registered a domain name containing “nippon”. Then, under the authorization of Nippon paint company, our law firm submitted the dispute to Asian Domain Name Dispute Resolution Centre, demanding transfer the domain name “nipponpaint.asia” to Nippon Paint company.

Eventually, we won this case and the domain name had been

transferred.

 

 

Q&A

 

 

Thanks

                 

|    Chambers Yang    Partner/Attorney

 

|     37F, Hongkong Plaza, 283 Huaihai Rd(M),Shanghai, China

|     Tel: 0086 21 6385 9090

|     Fax: 0086 21 6390 6651

|     Email: Chambers@hllawyers.com

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