Brand Protection In China

Eligio Pimentelepimentel@mcandrews-ip.com

Trademark Filing/Registration Statistics

Growth of Chinese Filings/Registrations

1998-2009: +550,000 registrations

2011: 13% of world’s applications

2012: 10 million registrations

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Growth In Trademark Registrations (1989-2009)

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Trademark Applications (1889-2009)

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Why So Many Applications/Registrations?

Chinese economy

Multiple applications for a single mark

Single class per application

First to file system

Business of squatting / hijacking

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Client Considerations

Enforcement plan

Register ASAP

– File within 6 months of your U.S. registration

Multiple applications per mark

Pre-emptive measures

– Facebook model

– Neighboring countries

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Oppositions To Trademark Applications

Opposition Against Trademark Application

– 3 month Opposition filing deadline

• Employ watch service

– Filing Additional evidence 3 months later

• Statement in Opposition

– Full or partial opposition against goods/services

– 30 days for Applicant to file Response

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Oppositions To Trademark Applications

Opposition Against Trademark Application

– Some bases for opposition:

• Unregistered, well “known mark”

• Unregistered, used, and acquired certain influence

• Registered, well known in different goods/services

• other property right (e.g. name, copyright, portrait)

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Cancellation Of Registered Trademark

Three types of cancellations

– Non-use of a registered trademark

• 3 consecutive years of non-use

– Improper registration

• Absolute bar (e.g. generic)

• Acquired by fraud or other unfair means

– Disputed registration

• Identical / similar to registered mark for identical / similar goods

• 5 year filing deadline9

Landrover Company v. Geeley Group

Cancellation of “Lu Hu” (Landrover)

Article 31 of the Chinese Trade Mark Law

– the pre-emptive registration of a trademark that has been used before in China by another party, and such prior use has created a reputation for the mark, is a form of bad faith registration.

Past: recognized reputation cannot be created through media

Landrover: evidence of 41 news reports and media commentary supported claim of recognized reputation

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Enforcement Through Administrative Agencies

Administration for Industry and Commerce (AIC)

– Infringement complaint by trademark owner / licensee

– Investigating and seizing infringing product

Administration of Quality Supervision, Inspection and Quarantine (AQISQ)

– Quality of the products / bear name of another person

– Confiscation and impose fine

Customs

– Detain goods if Chinese trademark is registered with customs

– 3 business days to file application to detain and pay bond11

Enforcement Through Administrative Agencies

Benefits

– investigations can occur shortly after the filing of the complaint

– the right holders in some instances may participate in the investigations

– Short time before determination of infringement / non-infringement, and, if appropriate, the imposition of a remedy

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Enforcement Through Administrative Agencies

Disadvantages

– No compensation for infringement determination

– Local protectionism / corruption / lack of resources

– Fines too low to put the infringer out of business

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Enforcement Through Administrative Agencies

Considerations

– Register registered trademarks with Chinese and U.S. Customs

– Responsive contact for customs

– Chinese agency in place

• Verification detained goods are infringing

• 3 business days to file application to detain & pay bond

– Monitor market

• Surveys to identify infringers

• Watch service for Trademark Gazzette

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Thank You

Eligio Pimentelepimentel@mcandrews-ip.com

312-775-8000