By Lin Jiuchu, Xiao Yuexin and Kang Lifang King & Wood Mallesons’ IP Group

“Alin_jiuchuRC’TERYX”and “image1” (hereinafter “the Cited Marks”), created and used by ARC’TERYX Company, have enjoyed a high reputation in respect of outdoor clothing, technical outerwear and accessories. The inspiration of the brands was originated from “Archaeopteryx”. “ARC’TERYX”is the unconventional

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 Harry Liu & Sam Li  King & Wood Mallesons’ Dispute Resolution  Group,  Shang Hai office

The Hemline Index, presented by American economist George Taylor in 1926, suggests that the hemlines on women’s skirts and dresses rise and fall with the rise and fall of the economy. Under this theory, the popularity of short hemlines coincides with a booming economy, but in bad times, long skirts and dresses show the modesty that bad economic times seem to require. However, assorted 2009 fashion weeks did not really reflect staying power of this economic theory. Only a few top luxury brands had ankle-length skirts in their fashion lines. This lack of modesty in the face of the recent recession probably has more to do with the fact that the clothes were designed one season before the weight of the recession had come to bear. Yet, even with fashion not reflecting the angst of the economy, people are seriously concerned about how the world will face this economic downturn.[1]
Continue Reading How Luxury Brands Can Cooperate with Agents to Protect Their Rights

作者:刘海涛 李嵘辉 金杜律师事务所争议解决组 上海办公室

在众多时尚经济学理论当中,最知名的恐怕就是裙长理论(Hemline Index)。1926年,美国经济学者乔治泰勒(George Taylor)提出女人的裙子长短与经济是否景气有关:流行短裙子,经济就活跃,而且裙子越短,经济就越活跃;流行长裙子,经济就萎靡,而且裙子越长经济则越萎靡。虽然在金融危机下的四大时装周中,广大的奢侈品牌并未多见让模特换上长可及踝的裙子[1],但萧条的经济所带来的阵阵寒意却难免会使人担忧换装可能只是时间问题。

美国《华尔街日报》日前援引机构预测说,今年全球的奢侈品销售额可能下降一成[2]。但在中国,销售量的增长却还令人感到欣慰:在2008年过去的11个月中,传统奢侈品消费市场日本和北美消费额骤降35%,而中国市场依然保持着22%的强劲增长[3]
Continue Reading 奢侈品品牌商如何在与代理商合作中保护自身权益

By King & Wood Mallesons’ Trademark Group

Recently, GreenTree Inn Hotel ("GreenTree"), an economy hotel chain that owns over 450 chain hotels in almost 150 cites in China, brought a lawsuit against a local hotel named "Green Home Business Hotel" ("Green Home"), which is located in the Yanchen City, Jiangsu Province, for the alleged trademark infringement and unfair competition. GreenTree’s mark in actual use, namely,  , consists of three parts, an oak tree device and the English of "GreenTree Inn" in an eclipse and Chinese Tradename of the hotel "格林豪泰" below the eclipse. In fact, in the four-character Chinese Tradename of GreenTree, only the first two correspond to "Green" in sound and the latter two are irrelevant to the word "GreenTree Inn" in either sound or concept, which pronounce "Hao" and "Tai", meaning "Generous" and "Peaceful", respectively.


Continue Reading “Green Home” Accused of Being Copycat of “GreenTree Inn”

作者:金杜律师事务所商标

日前,格林豪泰酒店(以下简称“格林豪泰”),一家在中国近150个城市拥有超过450家正在经营的经济型连锁酒店,起诉盐城市亭湖区一酒店“格林之家商务酒店”(以下简称“格林之家”)商标侵权和不正当竞争。格林豪泰在实际使用中的商标图样为,基本构造为椭圆形图案内包含橡树图、英文“GreenTree Inn”,以及椭圆形图案下方的“格林豪泰酒店”字样。值得注意的是格林豪泰酒店的中文名字与其英文名字GreenTree Inn并不完全对应。


Continue Reading 格林豪泰酒店起诉”格林之家商务酒店”商标侵权

By King & Wood Mallesons’ Trademark Group

Registering a foreign celebrity’s name as a trademark is an occurrence frequently seen in China. From Leonardo da Vinci and Air Jordan in the past to the rising NBA star Jeremy Lin, it has become a shortcut for companies to quickly occupy the market by using the foreign celebrities’ names as their trademarks.

The name right refers to the right of a citizen to decide, use and alternate the name by himself and to require others to respect his name. Article 31 of the PRC Trademark Law (the "Trademark Law") provides that protection on prior rights has covered protection on the name right. In addition, Article 10 of the Trademark Law provides that trademark registration should not be detrimental to social morals or customs, or have other harmful influences. These provisions also reflect the legislative intent to protect name rights. Specifically, the Trademark Examination Criteria provides that, without authorization, if registering another’s name as a trademark has caused or may cause damage to the name right of other, the mark shall be disapproved or cancelled from registration. The following conditions shall be met when applying under the above rule: a) the disputed mark is the same as the name of an individual; b) The registration of the disputed mark has caused or may cause damage to the name right of that individual. The names include legal names, pen names, and nick names. If using a name to register a mark may be detrimental to social morals or customs or cause other harmful influences, it shall be subject to the provisions under Article 10.


Continue Reading Protecting Name Rights of Foreign Celebrities under Trademark Law in China

作者:金杜律师事务所商标

将国外名人姓名申请注册为商标,在我国已是屡见不鲜。从已故的达芬奇、到尚健在的乔丹、刚刚崛起的林书豪,似乎将国外名人姓名注册商标已经成为经营者迅速打开并占领市场的捷径,当然也成为一些商标职业抢注者牟利的目标。

姓名权是公民依法享有的决定、使用、变更自己的姓名并要求他人尊重自己姓名的一种人格权利。《商标法》第31条有关保护在先权利的规定就包含了对姓名权的保护,此外《商标法》第10条第一款第(八)项有关申请注册商标不得有害于社会主义道德风尚或者有其他不良影响的规定也一定程度上体现了对名人姓名权的保护。具体来说,根据《商标审理标准》的规定:未经许可,将他人的姓名申请注册商标,给他人姓名权造成或者可能造成损害的,系争商标应当不予核准注册或者予以撤销。该条适用要件:(1)系争商标与他人姓名相同;(2)系争商标的注册给他人姓名权造成或者可能造成损害。他人的姓名包括本名、笔名、艺名、别名等。认定系争商标是否损害他人姓名权,应当考虑该姓名权人在社会公众当中的知晓程度。使用姓名申请注册商标,妨害公序良俗或者有其他不良影响的,依据《商标法》第十条第一款第(八)项的规定进行审查。


Continue Reading 商标法对国外名人姓名权的保护

By King & Wood Mallesons’ Trademark Group

Currently, trademark protection is becoming one of the hottest topics in China. The latest headlines include the NBA star Michael Jordan suing the Chinese sportswear and footwear manufacture Qiaodan Sports Joint Stock Company for the alleged infringement over his name right, the preemptive registration of the mark "LIN SHU HAO (Jeremy Lin’s Chinese name)", and the domain name "lingshuhao.com" being for sale at a high price.

These trademark-related cases have drawn great attention among scholars and China’s online community (often referred to as "netizens"). Most netizens gave their opinions in a rational manner and appealed for fair treatment over the parties involved within the purview of relevant laws and regulations. Some netizens acknowledged that China has changed from a single and occlusive market to an open and international one and the interaction and competition with foreign companies are more intensified than before. China will be left far behind if the market lacks honesty and legal rules.


Continue Reading Viewing IP Protection in China through Preemptive Trademark Registration