Trademark

Subscribe to Trademark via RSS

By Yang Hua  Ding Xianjie  and He Tongjun  King&Wood Mallesons’ Intellectual Property Group

untitleduntitled 01What should we concern: when determining the level of similarity between trademarks, it should be limited to comparing the part that the citation mark has acquired the right to exclusive use with the mark in application. The part that is disclaimed of the exclusive right to use in an early registration even if has distinctiveness should not constitute a valid part for comparison and impede registration of a later filed trademark.

“Disclaiming the right to exclusive use” in trademark application refers to the situation in which the proprietor makes a disclaimer to give up any right to exclusive use for a part of the trademark, in order to avoid rejection of the whole application due to registrability issue of the disclaimed part. Signs prohibited from registration due to lack of distinctiveness are the part that is more commonly disclaimed of the right to exclusive use. In practice, some proprietors also disclaim the right to exclusive use for a part that has distinctiveness (the Disclaimed Part), which gives rise to the issue referred above, whether the Disclaimed Part will function to impede the registration by others of a later filed application.
Continue Reading Trademark comparing: disclaimed part no longer valid even with distinctiveness

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

untitledWhat should we concern: prior copyright shall be regarded as a prior right being protected in China; a registered mark, which is substantively similar to the other’s prior copyrighted work, shall be announced invalid on the basis of copyright infringement.

“THE ADVENTURES OF TINTIN” (French: “LES ADVENTURES DE TINTIN”) is a world famous series of comic albums created by the Belgian cartoonist HERGE. After HERGE passing away, all the rights in association with this work have been assigned to and managed by Moulinsart which was established under the HERGE Foundation.  Since “THE ADVENTURES OF TINTIN” entered into China in 1988, this series work has gained immense popularity among the Chinese readers.  In China, Moulinsart has applied for and registered several marks for “TINTIN” and “TINTIN & Device” (drawing of this mark is listed below) in respect of various goods and services in classes 9, 16, 25, 28 and 41. The images of the boy and the dog with the bone as shown in the “TINTIN & Device” mark are the leading character “TINTIN” and his friend “Snowy” in the “THE ADVENTURES OF TINTIN”.
Continue Reading Registered trademark invalid based on prior copyright infringement

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 King&WoodMallesons’  Trademark Group

After years of expectation, China has begun to accept multi-class trademark applications since the newly-revised Trademark Law became effective on May 1, 2014.. Does this practice meet the anticipation of the trademark applicants?

As a common practice in many countries, multi-class trademark applications streamline the registration process in a cost effective manner. Not only the cost for filing is reduced for extra class(es) in one application, but that for future renewal, assignment, and recordation of name/address change, etc. can also be significantly reduced. Multi-class registration also brings high efficiency to administration of the trademark portfolios for brand owners.
Continue Reading Pros and Cons of Multi-Class Trademark Application in the PRC

By David Rose KWM SJ Berwin’s Intellectual Property Group

rose_dIn January this year, we reported on OHIM’s announcement of a new common practice for trademarks registered in black and white. OHIM and the participating national offices have now issued a Common Communication, together with details of the implementation process.

Under the new Common Practice, a black & white (or greyscale) mark will only be considered identical to a sign in colour where the differences between the signs are so insignificant that they will go unnoticed by the average consumer. An insignificant difference will be one that a reasonably observant consumer will perceive only upon a side by side examination of the marks.
Continue Reading OHIM and National Trade Mark Offices Announce Common Practice on Black & White Marks

By Ding Xianjie Yang Hua   King & Wood Mallesons’ Trademark Group

According to Chinese Trademark Law, the party concerned in cases involving granting or determination of trademark rights against the decisions of the Trademark Review and Adjudication Board (TRAB) under the State Administration for Industry and Commerce (SAIC) must bring an administrative proceeding to the First Intermediate People’s Court of Beijing Municipality. The second instance made by the Higher People’s Court of Beijing ( “Beijing Higher Court“) is a final judgment.

Recently, Beijing Higher Court publishes the Guidelines of Trial of Administrative Cases Involving Granting and Determination of Trademark Rights (the “Guidelines“）, which includes 30 Articles concerning the issues on recognition and protection of well-known trademarks, recognition and protection of geographical indications, determination of confusion and misidentification, protection of prior rights of copyright and rights to names, as well as the relevant court trial procedures under circumstances that the business license of a party has been revoked but the party has not gone through the termination formalities of its company. The main points are as below.
Continue Reading Notice of the Higher People’s Court of Beijing on Guidelines for Trial of Administrative Cases Involving Granting and Determination of Trademark Rights

By Ding Xianjie  King & Wood Mallesons’ IP Legal Group

I. Generic Top-Level Domain and the New Gtld

gTLD (generic Top-Level Domain, “gTLD”) is one of the top-level domains (TLD) managed by the Internet Corporation for Assigned Names and Numbers (ICANN). Under the current gTLD system, there are only 22 gTLDs available (not including the TLDs representing 200+ countries and territories, such as the .cn). These TLDs are generic terms representing the nature of the industry, such as, .com means commercial organizations (but unrestricted), .edu refers to educational establishments, .gov refers to U.S. government entities, .net originally refers to network infrastructures (now unrestricted). The frequently used ones are .com, .edu, .net, .org, .info, .biz, but the most commonly used and the most popular one is undoubtedly .com.
Continue Reading The Use of Trademark Protection Mechanisms under New gTLD System

By Cecilia Lou  Ding Xianjie and Yao Di King & Wood Mallesons’ IP Legal Group Shang Hai Office

On November 12, 2012, the Consultation Draft of Regulations on Service Inventions (“Draft Regulation”) was released by the State Intellectual Property Office of China for public comments with immediate effect. The Draft Regulation was formulated for the purpose of protecting the legal rights and interests of the inventor-employee and the employer, to stimulate and improve the ability to innovate. For those companies which have Chinese service inventions in China, they should be aware of this Draft Regulation as it places additional pressures on employers.
Continue Reading SIPO Releases Consultation Draft of Regulations on Service Inventions