Trademark Prosecution in China: Key Considerations When ...
Transcript of Trademark Prosecution in China: Key Considerations When ...
Trademark Prosecution in China:
Key Considerations When Seeking
Brand Protection Timing, Filing Strategy, Appropriate Translations, and Registering Several Versions
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TUESDAY, FEBRUARY 6, 2018
Presenting a live 90-minute webinar with interactive Q&A
Lauren Emerson, Counsel, Leason Ellis, White Plains, N.Y.
Paul D. Jones, Principal, Jones & Co., Toronto, Canada
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FILE EARLY, FILE OFTEN Trademark Prosecution in China: Key
Considerations When Seeking Brand Protection
WHEN TO FILE
Potential Triggers
Doing business
Planning to do business
Contemplating maybe someday doing business
Launching something new
Manufacturing
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WHEN TO FILE IN CHINA
New Trademark Law
Article 7: The application for registration and the use of a
trademark shall be made in good faith.
Article 13: Prohibition on registration/use of a copy or
imitation of an unregistered mark that is well known in
China
Article 15: Parties with business relationships with the
owner of an unregistered mark are prohibited from
registered the same mark (or a similar mark) for the same
or similar goods/services.
Article 32: An application for trademark registration shall
not prejudice any pre-existing rights of others; nor shall
any party be permitted to pre-emptively or by any
improper means register a trademark which is used by
another person and enjoys a certain reputation.
10
WHEN TO FILE IN CHINA
OEM Marks:
If you have goods made in China, and a trademark
placed on the goods there – Register your mark now!
To ensure your loyalty, manufacturers in China have
developed the habit of registering the mark that they
place on the goods with the Trademark Office and
with PRC Customs
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WHEN TO FILE IN CHINA
So if you try to switch to another manufacturer
because of their price hike, they can have your
products seized by PRC Customs
Alternatively, you can try relying on the outcome
in the Pretul case (also known as the OEM
doctrine) and fight for your next shipment from
China, and the rights to your trademark in court
in China
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TRADEMARK CLEARANCE IN CHINA
First Priority – Search the PRC Trademark
Database – available online
Shadow databases in English are not always up
to date and are not reliable
Wares and services however are only in Chinese
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TRADEMARK CLEARANCE IN CHINA
For the English version of the mark:
Where the mark can be easily translated into
Chinese, need to search these translations
For example: “APPLE” is 苹果 (pronounced “ping
guo”)
But sound-a-like marks in Chinese are very hard
to search
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TRADEMARK CLEARANCE IN CHINA
In addition, search online
For English marks use Baidu or your favorite
search engine to search for:
THE MARK [plus a description of the wares
or services in Chinese]
Although the brand owner has not been
marketing in China, we often find Chinese web
sites re-selling the goods in China
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TRADEMARK CLEARANCE IN CHINA
If you are ordering searches from a third party,
remember to order searches in related classes
In the PRC Trademark database all classes are
returned in the results
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TRADEMARK CLEARANCE IN CHINA
Solutions to hits:
Adding design elements
Adding the Chinese character version of the mark
Changing the description of the wares or services to
fit into different subclasses in the same Nice Class
Co-Existence Agreements with Chinese parties
are possible, but rarely practicable
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NATIONAL VS. MADRID
Potential Benefits of Filing Through the Madrid
Protocol
Ease of filing
May not need Chinese counsel
Can file in English, French or Spanish
Potential for greater flexibility regarding the
identification of goods and services
Multi-class
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NATIONAL VS. MADRID
Potential Downsides of Filing Through the
Madrid Protocol
Certificate of Registration not sufficient:
For enforcement
For customs
For many online retailers
Using an identification of goods or services that
works well elsewhere in the world may not be
strategically advisable in China
CTMO will pick your sub-classes
Gaps in coverage!
Processing can take longer
Priority blunders 21
NUTS AND BOLTS
Applications must be in good faith
Register in as many classes as the budget allows
Have a Chinese character name for the owner
and use it consistently
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NUTS AND BOLTS
New Trademark Law
Sound marks
Multi-class applications
Faster processing of applications
Examiners have broad discretion in issuing refusals
Lack of distinctiveness
Similarity to registered marks
Negative impact on society
Two Areas of Focus: The Mark and The
Description of Goods and Services
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NUTS AND BOLTS
The Mark: In English
Consider the view of the average Chinese consumer
Weak command of English
Therefore, unusual spellings usually lack
distinctiveness
Words that have similar spellings but different
meanings may be considered confusing
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NUTS AND BOLTS
The Mark: In Chinese
Very Important to have a Chinese Character Mark,
and use it consistently in China
Even bilingual Chinese consumers in North America
usually only remember the Chinese Character
version of the mark
If there is no Chinese Character mark, Chinese
consumers are likely to create one for you, and it may
not be as flattering as you wish
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NUTS AND BOLTS
How does this work?
Each Chinese Character is a unit of meaning, but not
all are words, of one syllable
Chinese uses about only about 1,300 syllables for
about 7,000 to 10,000 characters
One syllable may represent about 80 characters
Great for word play – Terrible for protecting brand
image!
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NUTS AND BOLTS
How to create a Chinese character version of your
mark?
Translation: “APPLE” = 苹果 (pin guo)
Sound-a-likes: “WALMART” = 沃尔玛 (wo er ma)
A combination of translation and sound-a-like:
“STARBUCKS” = 星巴克 (xing ba ke)
Something completely new
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NUTS AND BOLTS
Biggest Problems?
Choosing the most appropriate characters when
creating “sound-a-like” versions
Letting your distributor – licensee – franchisee
use their Chinese version of the mark
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NUTS AND BOLTS
Description of Goods/Services
Nice Classification System + 45 Classes
Plus subclasses
Class 9: 24 subclasses 0901: Computer and External Devices
0909: Audio Equipment
0914: Electrical Appliance and Control Devices
0922: Batteries and chargers
0924: Catch-all
Class 35: 9 subclasses 3501: Advertising
3503: Sales Promotion for Others
3506: Office Business
3507: Accounting 30
NUTS AND BOLTS
Classes/Subclasses > Specific Description
Relatedness
What this means for watch notices
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OPPOSITIONS AND APPEALS
Proceedings in Courts and tribunals work
differently in China
China is a civil law jurisdiction based on
Germany
In civil law there is no discovery, no obligation on
the other party to produce evidence
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OPPOSITIONS AND APPEALS
Evidentiary weight is given to documents agreed
upon by both parties
Or verified by third parties such as notaries
Little weight is given to documents produced by
one of the parties – such as affidavits
Or oral testimony
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OPPOSITIONS AND APPEALS
Hearings are very short (usually about 20
minutes) during which the judge questions both
parties on their written submissions and
evidence
Winning is based on having a good legal analysis,
and strong documentary evidence
Documents from outside China need to legalized
and notarized, which may be refused for technical
reasons 35
OPPOSITIONS AND APPEALS
Appeals:
The PRC TMO gives much more weight to the Nice
Classification system to determine confusion than do
the courts
So where the allegations of confusion are based on
the classification system rather than customer
perception – chances on appeal are higher
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OPPOSITIONS AND APPEALS
Appeals from the Trademark Review and
Adjudication Board (TRAB) are now to the
Beijing IP Court
IP court is less technical or restrictive than
TRAB
But the number of successful appeals is still low
TRAB decisions and court decisions are available
online in Chinese
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PRESERVATION STRATEGIES
Use your marks in China
Customs
Register your mark with the General Administration
of Customs (GACC)
10 years
Alert customs to particular known shipments of
infringing product
Implement watch notices
And review them with China’s subclass system in
mind
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PRESERVATION STRATEGIES
Register copyrights in China and/or your home
jurisdiction
Berne Convention member state
Design patents – industrial designs
Anti-Unfair Competition Law (AUCL)
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有问题吗?- QUESTIONS?
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Lauren Emerson, Counsel, Leason Ellis, White Plains, N.Y.
Paul D. Jones, Principal, Jones & Co., Toronto, Canada