trademark infringement

By Jiao Hongbin and Liu Yuxin

Under normal circumstances, OEM refers to the situation where a Chinese manufacturer enters into an entrustment contract with an overseas company that owns the trademark(s), sometimes in China but in most cases, in other jurisdictions. The Chinese manufacturers are required to produce or process products according to the requirements of this overseas company, attach its trademark(s), and deliver all products to another country designated by this overseas company with no sales in China. Things become complicated when the overseas’ company’s trademarks registered outside China are registered by a third party which has no relation with the overseas company at all in China.
Continue Reading Trademark Use or Not? Trademark Infringement or Not? –The Supreme People’s Court of the P.R.C. Made its Latest Voice in an OEM Related Trademark Infringement Case

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

Recently, the KWM IP litigation team, on behalf of Deere & Company, won the final trial of a lawsuit involving trademark infringement and unfair competition. The defendants were John Deere (Beijing) Agricultural Machinery Co., Ltd and other two.
Continue Reading 1st Civil Case Recognizing Well-known Trademark on Similar Goods

By Ding Xianjie King & Wood Mallesons’ Trademark Group

xian-jie_dingWhether OEM constitutes trademark infringement has been an area of controversy in the field of intellectual property for many years. The ongoing debate has arisen recently, mainly focusing on the following three points: a) whether export-related OEM constitutes trademark infringement regulated by the Trademark Law of the PRC; b) whether OEM satisfies the requirement of “prior use” with an ability to prevent others from registering the trademark on the same or identical goods by illegitimate means; c) whether OEM can defend others’ cancellation requests on the grounds that the trademark has not been used for three years consecutively.

With regards to the abovementioned issues, the focus of the argument lies in whether the “brand-post” in OEM is a use of trademark in the sense of Trademark Law. If a) above is not satisfied, b) and c) will be problematic. This article summarizes existing case law and the prevalent literature, and concludes that the current controversy over the use of trademarks shall be weakened, but over the substance of trademark right protection.
Continue Reading Analysis of the use of trademarks in OEM based on the legislative intent of trademark protection

By Mia Qu and Sally Wang     King & Wood Mallesons’ IP Litigation Group

qu_miaoAccording to the data of Chinese e-Commerce Research Center, by the end of 2012, the trading volumes of e-commerce market in China had reached 7.85 trillion. In 2013, it was 10.5 trillion and is expected to reach 13.4 trillion in 2014. From the industry distribution of e-commerce websites, the top ten industries are: apparel, textile, agriculture and farming, digital household appliances, machinery and equipment, chemicals and plastics, food and wine, construction materials, hardware and tools, medical treatment and medicine. Along with this phenomenon, the protection of intellectual property rights in the online sphere is also facing a whole new series of challenges. This article will focus on the discussion of issues of trademark infringement in e-commerce.
Continue Reading Common Issues of Trademark Infringement in e-Commerce and Enforcement

By Xu Jing and Zhang Hairuo   King & Wood Mallesons’ IP Litigation Group

On April 22, 2013, the Supreme People’s Court of the People’s Republic of China (the “SPC”) released its Annual Press Release regarding Judicial Protection of Intellectual Property and Model Cases of 2012. The SPC therein unveiled the “Top Ten Innovative Intellectual Property Cases in China (2012)”, which included the “Leroy-Somer” trademark and company name infringement case (Case Number: [2012] Min Min Zhong Zi No. 819). As lawyers from King & Wood Mallesons’ IP Litigation Group, we represented the Plaintiffs, Leroy-Somer Societe Anonyme ( “LS”) and Leroy-Somer Electro-Technique (Fuzhou) Co., Ltd. (the “LSFZ”), against Lilaisenma Fujian Electrical Machinery Co., Ltd. (the “LLSM”) in this matter.
Continue Reading “Leroy-Somer” Trademark Infringement and Unfair Competition Case Named One of China’s Top 10 Innovative IP Cases of 2012

By King & Wood Mallesons’ Trademark Group

WeiChai Power Co. Ltd. (“WeiChai Co. Ltd.”) has been using “WeiChai” as their well-known company name and trademark. WeiChai Co. Ltd. filed a complaint at the Domain Name Dispute Resolution Center against SHENZHEN PANGU INVESTMENT GUARANTEE CO. LTD. (later changes its name to GUO ZHONG CO. LTD.) for their registered “weichai.cn.” domain name. On 30 January 2011, the Domain Name Dispute Resolution Center ruled that the domain name should be transferred to WeiChai Co. Ltd. Dissatisfied with the ruling, GUO ZHONG CO. LTD. initiated a civil action before the Beijing First Intermediate People’s Court,
Continue Reading The relation between Domain Name Registration and Trademark infringement

by King & Wood Mallesons’ Trademark Group

Currently there is a problem where the worldwide Trademark Clearing House cannot extend its service to Chinese users. On 16th June, for the sake of solving the above problem, the China Organizational Name Administration Center released a system, which provides preventive protection to Chinese domain names and trademarks. This localizes the services of trademark clearing house, as well as enhances the legal protection offered to Chinese trademark owners on the worldwide platform of the Internet.
Continue Reading China develop its Chinese Trademark Clearing House for more protection towards trademark owners

By King&Wood Mallesons’ Trademark Group

The Second Draft Amendment to the Trademark Law of the People’s Republic of China (the “Trademark Law”) was tabled for discussion during the 3rd meeting of the 12th Standing Committee of the National People’s Congress on June 26, 2013. The proposed amendment included several important new provisions which enhance the compensation against trademark infringement, refine the protection for well-known trademarks and notably, regulate for the first time the examination speed of the trademark authorities. The following are the major new amendments compared with the previous versions of draft amendment.
Continue Reading Draft Amendment of the Trademark Law: Compensation ceiling for trademark infringement doubled up to RMB 2 million

By King & Wood’s Trademark Group

In March, the leading domestic industrial recorder enterprise Hangzhou Pangu Automation Systems Co., Ltd. ("Pangu Ltd.", 杭州盘古自动化系统有限公司) found that searching on www.baidu.com ("Baidu", 百度公司) for "Pangu recorders (in Chinese)" etc. returned results heading "Pangu recorder professional manufacturer Hangzhou Mengkong instruments www.mkong.com.cn (in Chinese)", and clicking the link leads to the website of Hangzhou Mengkong Instrument Technology Co., Ltd. ("Mengkong", 杭州盟控仪表技术有限公司).


Continue Reading First Instance Court Finds that Internet Keywords Constitute Infringement by Using Unauthorized Trademark