Trademark Enforcement Practice in China - e

Transcription

Strategic Guidelines for Trademark Protection
in China
Aimin HUO
[email protected]
CCPIT Patent and Trademark Law Office
©2012
Your Partners & Your Solutions!
CCPIT PATENT AND TRADEMARK LAW OFFICE
1
Imaginatinon is more important than knowledge.
- Albert Einstein
No man was ever great by imitation.
- Samuel Johnson
Imitation is suicide
-Ralfph Waldo Emerson
Shanzhai/山寨 – Robber’s “Mountain Fortress”, a rebellious “copycat counterculture”？
2
Trademark - Definition
Source Indicator

Any visually perceptible sign, capable of distinguishing the goods or services of one natural person,
legal person or any other organization from those
of other persons.
3
Trademark Definition
A trademark is a graphically perceptible sign used to distinguish the goods
and/or services from one source from other ones.
Words, devices, letters, numerals, 3-dimensional signs, combination of
colors or any combination of such signs
 Music, sounds, smells: The Intel Tone…

4
Why Trademark Protection?
Interest at Stake
1.
Prevent consumer confusion/fraud.
2.
Reduce consumer search costs.
3.
Encourage investment in quality, consistency, or brand
development.
4.
Prevent free-riding.
5.
Encourage competition.
6.
Protect freedom of expression.
5
Spectrum of Trademarks - Distintiveness




Fanciful/arbitrary - Inherently distinctive
Suggestive
- Inherently distinctive
Descriptive
- Possibly distinctive
Generic
- Never distinctive
6
Spectrum of Trademarks - Fanciful
7
Spectrum of Trademarks - Arbitrary
8
Spectrum of Trademarks
Suggestive vs Descriptive
9
Secondary Meaning





Amount and manner of advertising
Volume of sales
Length and manner of use
Direct consumer testimony
Consumer surveys
10
Spectrum of Trademarks - Generic
Aspirin
优盘
MULLER
11
Legal Basis for Trademark Filing and Enforcement in
China
Domestic Legislature
 Trademark Law




Came into force on March 1,1983
Revised on July 1, 1993
Revised again on December 1, 2001 as China became a member of
WTO
Current Implementing Regulations of the Chinese Trademark Law

Enforced on September 15, 2002.

Applicable Laws, Judicial Interpretations, Regulations etc.
e.g., unfair competition law, copyright law, patent law, civil law, criminal law…
12
China
International Conventions and Agreements
 WIPO


The Paris Convention


China became a member of the World Intellectual Property
Organization on June 3,1980
China acceded to the Paris Convention for the Protection of Industrial
Property (Stockholm Act) on March 19, 1985
The Madrid Agreement

China became a party to the Madrid Agreement Concerning the
International Registration of Marks on October 4, 1989
13
China

The Madrid Protocol


China became a party to the Madrid Protocol Relating to the Madrid
Agreement Concerning the International Registration of Marks on
December 1, 1995
The Nice Agreement

China became a party to the Nice Agreement Concerning the
International Classification of Goods and Services for the
Purposes of the Registration of Marks on August 9, 1994
14
Trademark Filings and Protection
First Come, First Served

Principle of Trademark Protection in China
First to File Principle and Registered Trademarks Protected
Well-known Trademarks
Trademark Protection under Anti-Unfair Competition Law, Copyright Law and Patent Law

Trademark on Goods and Service, Collective Mark and Certification Mark
BMW for cars
Sheraton for hotels and resorts
Collective mark – membership; Certification mark – certification of origin, quality etc.
Geographical Indication: PARMAHAM - cheese, Italy
GRANAPADANO CHEESE - cheese, Italy
STOTCH WHISKY – whisky, UK
15
Trademark Filings in China

Trademark Generation/Adoption
In-house Counsels, Business, Trademark Attorneys – Team Work on Trademark Selection
Public use – Viagra/伟哥; Sony-Ericsson/索爱

Trademark Clearance – 10,02 Million marks filed, 6.89 Million marks
registered and 5.72 Million marked valid by March of 2012 – No. 1 in the
world.

Trademark Filing

Trademark Examination (Publication/Registration – 12 to 18 months)
Formality,
Legality – Article 10 of PRC Trademark Law
Distinctiveness – Article 11 of PRC Trademark Law
Identity and/or Similarity – Article 28 and 29 of PRC Trademark Law
Exception: Secondary Meaning Acceptable in China

Official Action
Amendments
Official Refusal – Abandon or Request for Review at TRAB
16
Trademark Filings
Legality
Article
10 Marks prohibited for registration and use

Those identical with or similar to the national name, national flag,
national emblem, military flag, or decorations, of the People's
Republic of China, or identical with the names of the places or the
names and designs of landmark buildings where the central
government agencies located

Those identical with or similar to the national names, national flags,
national emblems or military flags of foreign countries, exception for


Consented by relevant country’s government
Trademark registration in that country as consent
17
Trademark Filings
Legality

Those identical with or similar to the names, flags or emblems, of
international intergovernmental organizations, exception for




Consented by the relevant organization, or
The public is not likely to be misled by using it as a mark
Those identical with or similar to official signs or hallmarks showing
official control or warranty, unless the use is otherwise authorized
Those identical with or similar to the symbols, or names, of the Red
Cross or the Red Crescent
For details, please visit
http://www.saic.gov.cn/spw/flfg/200904/t20090408_55188.html
18
Trademark Filings in China
International Registration under the Madrid Mechanism
Territorial extension to China via the Madrid Agreement and/or the Protocol
Territorial extention subject to examination by PRC Trademark Office and may
encounter official refusal if the trademarks are not compatible with PRC
Trademark Law
19
Well-Known Trademark Myth
Well-Known Trademarks Recognized on Case-by-Case Basis
Authorities Recognizing Well-Known Trademarks

The Trademark Office


The TRAB (Trademark Review and Adjudication Board)


Cancellation
State AIC (Administration for Industry and Commerce)



Opposition
Infringing use of trademarks on dissimllar goods/services
Infringing use of trademarks as trade names
• Difficult because the AIC internal procedures are not worked out
The Court


Since 2001
Where there is a case of infringement of a mark, the court may also
recognize a mark as a well-known trademark
20
Well-Known Trademark Tests





Reputation of the trademark in the relevant sector
Duration of use of the trademark
Duration and geographical scope of publicity of the trademark
Prior records of protection of the trademark as a well-known trademark;
Other factors contributing to the reputation of the trademark
Evidence on Well-Known Trademarks
Use of the trademark inside China rather than outside of China
21
Article 13-1
 Protection of Unregistered Well-Known Trademarks




A reproduction, an imitation, or a translation
Likely to cause confusion amidst the relevant public
Registration and use prohibited
Protection limited to trademark use on similar or identical goods/service only
Article 13-2
 Protection of Registered Well-Known Trademarks




A reproduction, an imitation, or a translation
Likely to mislead the public and damage the interests of the owners of the
registered well-known trademarks
Registration and use prohibited
Protection cover trademark use on dissimilar goods/services
22
Recent Judicial Interpretation on Well-Known Trademarks by SPC

The Interpretation on Issues Relating to Implementation of Law in Civil
Disputes over the Protection of Well-known Trademarks promulgated by
the Supreme People’s Court of China on April 23, 2009 and came into
effect on May 1, 2009

Unregistered well-known trademarks may have priority over later
identical or similar registered marks
23

To prevent the abuse of judicial procedures in recognition of wellknown trademarks, court will give recognition in cases related to





Cross-class protection for registered well-known marks
Cessation of infringement of unregistered well-known marks
Conflict between well-known marks and names of enterprises (trade names)
But will not give recognition in cases related to conflict between well-known
marks and domain names
To specify the factors to be considered in recognition of the wellknown trademarks

Apart from Article 14 of the Trademark Law, the Interpretation also stipulates
such factors as market share, goodwill, and continuous use of the mark
before registration
24

To lower the burden of proof in respect of the “Super Well-Known
Trademarks”


The court may confirm the well-known trademark status based on submission
of fundamental evidence are provided
• Sheraton - Hotels
• Marlboro - Tobacco
• YKK – Zippers
Self-admission rule no longer applicable



To clarify that the self-admission rule will not be applicable in recognition of
well-known trademarks
Some trademark owners may fabricate fake trademark disputes with a view to
exploiting the dispute to obtain recognition of well-known trademark status.
the defendant invariably admits all the claims and evidence
The self-admission rule is abused
25

Cross-Class Protection Condition

The court will not grant injunctions on the defendants to stop them
from using the trademarks or trade names in dispute if the plaintiff’s
trademark is well-known in a particular field and use of the
trademarks/trade names by defendant will not cause confusion
among relevant public

Well-known trademarks are not overly protected
26
Legitimate and Proper Use of Trademark
 Definition of Trademark Use
Use of the trademark on goods, packages or containers of the goods or in trading documents, and the
use of the trademark in advertising, exhibition or any other business activities.

Legitimate Use of Trademark in line with PRC Trademark Law
Always use the trademark in the registered form

Proper Use
Always use the registered, e.g.Dyneema® trademark, as an adjective, never as a noun
→
→
→
Dyneema® HPPE fiber
Products made with Dyneema® HPPE fiber
Gloves made with Dyneema® fiber
Always use the capital letter to distinguish the trademark → Dyneema®

Proper Marking
Always use indication ®, 注 in circle, 注册商标 (Registered Trademark) for registered trademarks
Always use indication TM for unregistered and pending trademarks
Always the trademark statement: Dyneema®, Dyneema® The World's Strongest Fiber™ and Dyneema
Purity® are trademarks of DSM
27
Trademark License Agreement

Trademark License Agreement – Article 40
Licensor shall supervise quality of licensed goods;
Licensee shall guarantee quality of license goods;

Use of Trademark by Licensee
Name of the licensee and the geographic origin of the goods must be indicated on the goods that
bear the registered trademark.
Use of the trademark according to terms in the License Agreement and PRC Trademark Law with
proper marking

Recordal of Trademark License Agreement
The trademark license contract shall be submitted to the Trademark Office for recordal.
Recordal: Optional but sometimes necessary!!!
Recordation takes 6 – 8 months
28
Oppositions & Cancellations
 Oppositions
Definition – Article 30 of PRC Trademark Law
Oppositions based on public policy arguments
Oppositions based bad faith / well-known trademark arguments
Oppositions based on identity/similarity
Oppositions based on prior rights
 Cancellations
Definition – Article 41 of PRC Trademark Law
Cancellations based on public policy arguments
Cancellations based on bad faith / well-known trademark arguments
Cancellations based on identity/similarity
Cancellation based on prior rights
Cancellation based on non-use
Trademark Watch Necessary
29
Liklihood of Confustion – Key Factors
1.
Strength of plaintiff’s mark
2.
Degree of similarity between the marks
3.
Proximity of the products or services
4.
Likelihood that plaintiff will bridge the gap
5.
Evidence of actual confusion
6.
Defendant’s good faith in adopting the mark
7.
Quality of defendant’s product or service
8.
Sophistication of the buyers
30
Trademark Enforcement in China
Characteristics of Trademark Infringement in China

Infringement Acts: Diverse, Professional, Organized
Diverse: Covering All Aspects in Commerce
Professional: Retaining Legal Counsels and Obtaining IPR
Organized: Mastermind – Producer – Distributor

Counterfeiting Operations - Underground Production

Globalization of Infringement Acts
Export of Counterfeiting/Infringing Products on the Rise

Counterfeiting/Infringing Acts on the Internet:
Sales of Counterfeits online
Cybersquatting Activities

IPR Problem Regions: Guangdong Province, Zhejiang Province,
Fujian Province… & Moving into Inner China
31
The Hot Area
32
The Hot Area
33
Challenges

Underground Operations - Masterminds of Infringing Acts

Trade Name Infringing Acts
Mainland China
Hong Kong

Online Infringing Acts –
New Rules, New Games

Local Protectionism

Hostile Mentality – Shanzhai Culture
34
Potential IP Counterfeiters/Infringers

Manufacturers

Distributors (Wholesalers/Retailers)
Possible Mastermind and Organizer of Counterfeiting Acts
Regional Wholesale Markets

Exporters/Importers

Service Providers

Warehouse Landlords

Authorized Dealers / Business Partners

Printing factories

Transport companies
35
IP Dispute Resolution Mechanism

Negotiation/Mediation/Arbitration
Efficient and economic solutions to infringement problems and disputes with business partners

Administrative Proceedings
AIC, TSB, IP Bureau（Formerly Patent Bureau), Customs Office, F&D, Police…
Aggressive actions against counterfeiters/infringes – efficient and economic

Criminal Investigation
PSB（investigation transferred from the administrative authorities, ex officio investigation,
investigation requested by IP owners……）
Aggressive actions against counterfeiters – put the counterfeiters behind the bars!

Judicial Proceedings
Litigation（Civil/Criminal) – maybe costly but possible to claim damages from
counterfeiters/infringers

Ex Officio Legal Actions
Official Raids and Official Anti-Counterfeit Campaign at All Levels – Join in the ex officio actions and
solve problems with minimum costs
36
Trademark Enforcement Strategy -1

Proactive and Adequate Filings and Prosecution Strategy – Broader Scope of
Goods/Services





Trademark/Domain Name Filings – File the Trademarks in Chinese
Design Patent Filings/Copyright
Well-Known Trademark Talks – Well-Known Trademark Syndrome in China
Tips on Effective Collection of Evidence to Support Well-Known Trademark Claims
IPR Customs Recordations
Monitoring and Investigation



Trademark Watch
Market Monitoring
Field Investigations
Intelligence/Evidentiary Support Counts!
Counterfeiters/Infringers Active in Securing IP Rights
37
Trademark Enforcement Strategy - 2
Stop Watch Walk!
Which combinations of trademarks must be registered ?
 Keeping a lookout for local equivalents ?
 Is trademark portfolio protected in traditional and simplified scripts ?
 Pre-emptive and register predictable equivalents ?


Does current protection take these factors into consideration ?
Translation:
mark is based on literal meaning of the trademark
 Transliteration: mark is based on converting phonetic sound of
trademark

38
 Situation Analysis and Formulating Effective Enforcement Strategy


Case by Case Strategy
Long-Term Strategy – Supply/Demand and Consumers - Necessary
Flexible and Creative Strategy – Necessary
Mobilization of All Available Resources in Legal Actions –
Ex Officio Actions
Bring them to courts!!!
 Public Education
 Publicizing Success Stories of Legal Actions
 Educating the Consuming Public and Engaging the Consumers
in Legal Actions – Tips from Consumers
 Warning Potential Counterfeiters/Infringer
People’s War on Counterfeiters/Infringers!
39

Government Relations and Lobbying Efforts

Close Cooperation with the Chinese Law Enforcement Authorities at
State, Provincial, Municipal and County Levels/Working with Embassies
in China

Public Relations Visits and Training of the Chinese Law Enforcement
Officials/Commendatory Plates
Anti-Counterfeiting Brochures/Manuals for the Chinese Law Enforcement
Officials

Joining Lobbying Groups

Joint and Concerted Actions
40
Watch Your Back!





Make sure that use of the trademarks does not infringe third party rights
to prevent
Withdrawal of a campaign
Recall of a product
Ambush and attack
Payment of damages

Projects should be screened for availability and legitimacy

Report any incident in which trademark rights are (threatened to be)
infringed without alerting infringers
41
Do’s and Don’ts before the Infringers

Do’s
Monitor the market for leads on infringes
Collect information and evidence (name/address/sample) at first opportunity
Report to in-house counsel as quickly as possible
Assist in-house counsel and outside attorneys in in-depth information
Offer assistance during the legal action
Always keep documentary evidence of trademark use for legal actions against infringers

Don’ts
Do not contact the infringes or carry out in-depth investigations without counseling in-house and outside
counsels
Do not engage the infringes in legal actions without counseling in-house and outside
counsels
Do not answer inquiries from the infringer and media without counseling in-house and outside
counsels
Do not make any statement on the case without checking without checking with counseling in-house and
Your Partners
& Your
Solutions!
outside
counsels
42
Public Resources
www.saic.gov.cn
www.ctmo.gov.cn
www.sipo.gov.cn
www.customs.gov.cn
http://ipr.chinacourt.org
http://www.ncac.gov.cn/cms/html/205/index.html
http://www.mps.gov.cn/n16/n80227/index.html
http://www.aqsiq.gov.cn or http://zfdcs.aqsiq.gov.cn
www.wipo.org
www.inta.org
www.qbpc.org.cn
http://dndrc.cietac.org/cietac.jsp
https://www.adndrc.org/bj_home.html
43
Case Studies
Are They Driving You Crazy?
44
Case Study
Are they driving you crazy?
Trademark hijacker
Piratical registration
Preemptive registration
Some bad buys are looking at your trademarks, trying
to take free ride of reputation of your marks!
45
46
47
48
49
Justice Prevailed
Red Bull v.s. Red Bull
50
Justice Prevailed
Red Bull v.s. Red Bull
51
Justice Prevailed
Red Bull (Reg. No. 723201 ) v.s. Red Bull (Reg. No. 800816)
52
Justice Prevailed
Red Bull (Reg. No. 723201 ) v.s. Red Bull (Reg. No. 800816)
Trademark Cancellation Action Based on Bad Faith Argument Failed at
TRAB and Chinese Courts
Trademark Cancellation Action Based on Non-Use Failed at PRC
Trademark Office and TRAB but Succeeded at Chinese Courts
The Trademark Reg. No. 800816 RED BULL and Logo Declared Invalid in
2010
Now Relying upon Success in Trademark Cancellation to Kick the
Infringing Products off the Market
The Fight Is Not Over Yet！
53
The Bloody Bull Fighting
54
Justice Denied
TM Reg. No. 627498 “采乐(CAI LE)” v.s. TM No. 1214187 “CAI LE/采乐”
55
Justice Denied
56
Justice Denied
Initial Trademark Cancellation Failed in 1999 before TRAB.
Second Trademark Cancellation Failed again 2001 before TRAB.
Third Trademark Cancellation Succeeded in 2005 before TRAB
Court of First Instance Upheld TRAB Judgment in 2007
Beijing High Court Upheld TRAB and Verdict of First Instance in 2007
PRC Supreme Court Reversed the TRAB judgment and Court Verdicts in
2009
57
The Winner is …
58
Trademark and Trade Name Filings in Bad Faith
59
Trademark Filings in Bad Faith
60
KFC v.s. KFG
61
McDonald’s?
62
Infringement upon Well-Known Trademarks
63
Infringement upon Well-Known Trademarks
64
Our Showcase of Counterfeits Seized in Enforcement Actions
65
Strategic Guidelines for Trademark Protection
in China
Thank You Very Much!
Aimin Huo
[email protected]
CCPIT Patent and Trademark Law Office © 2012
66

Trademark Enforcement Practice in China - e

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