By Dang Zhe and He Shijia King & Wood Mallesons’ IP group.

dang_zheAt the end of 2016, KWM’s IP Litigation Group obtained favorable judgements for its clients in “Ariston Case[1]” and “John Deere Case[2]”, two typical disputes concerning infringement of well-known trademarks by ordinary registered trademarks. The two cases are respectively included in the “Top 10 Cases Concerning IPR Judicial Protection Heard by Courts in Jiangsu in 2016” and the “Exemplary Cases in Terms of ‘Strengthening the Judicial Protection on IPR’” at the occasion of the 2nd anniversary of the Beijing Intellectual Property Court. Based on these two cases, this article introduces and explains the evolution and development of judicial interpretations and practice relating to the protection of well-known trademarks, and therefrom draws conclusions and trends about certain adjudication rules in China.
Continue Reading How to Handle Complex Disputes Between Registered Trademark and Well-known Trademark in China?

By Yang Hua  Wang Fang  King&Wood Mallesons’ Intellectual Property Group

untitledWhat should we concern: registered trademark, filed in the name of others without others’ authorisation should be deemed as “obtained through means of fraud” and should be announced invalid.

DELTASOFA’S S.R.L. (“DELTASOFA”) was established on September 19, 1985 by Vincenzo Liborio Calia, a skilled master carpenter in Europe who in 1965 started to design and produce sofas in south Italy and created the famous sofa brand “caliaitalia”. Nowadays the “caliaitalia” sofa products are sold in countries in North America, the Middle East and the Far East.

On August 1 2008, a Guangdong company filed a trademark application for the mark “caliaitalia” under No. 6875537 (hereinafter as “mark in dispute”) in the name of “Calia Italia S.p.A” (the former name of DELTASOFA”). In 2011, this Guandong company, again in the name of “Calia Italia S.p.A.”, signed the trademark assignment documents regarding the mark in dispute and had the mark assigned to its affiliated company.
Continue Reading Trademark invalid: registering in others’ name with no authorisation

By Ding Xianjie King & Wood Mallesons’ Trademark Group

The State Council promulgated the revised Implementing Regulations of the Trademark Law of the People’s Republic of China (Revised in 2014) (the “New Regulations”) on April 29, 2014 to better coordinate the implementation of the third revision of the Trade Law of the People’s Republic of China (the “Trademark Law”).The New Regulations, containing 98 Articles in ten Chapters, mainly supplements and details related systems according to the modified content in the Trademark Law, adds the established practices that already existed in the works of trademark review, adjudication and management based on the practical requirement, and further clarifies issues concerning protection of the exclusive right to registered trademarks and trademark agency, etc. The New Regulations and the Trademark Law will take effect from May 1, 2014.
Continue Reading Specific Guidance on Protection of the Exclusive Right to Registered Trademarks Offered by the Revised Implementing Regulations of the Trademark Law