Trademark protection: To ensure a fair market

With the rapid global economic growth, the trade mark has played more and more important role in enterprise operation. A good trademark is not only a recognizable design, but also the company’s great intangible asset. The trademark is like a saving account, when you constantly accumulate its value by producing products of good quality, you can enjoy its interest for a long period.

Nowadays the world’s most famous trademarks generally have the value of more than billions of US dollars. Some people say that, for example, Coca Cola, ranking first in the worldwide well-know brand list,  even one day the company was destroyed thoroughly by fire accident, it can rebuild itself quickly only by virtue of its trademark. This is the power of trademark, and now we can understand why it is so important to protect the trademark.

The trademark law in China was adopted in 1982 and amendments were made in 1993 and 2001. On August 30, 2013, after more than 7 years of deliberation and discussions, China’s top legislature adopted the third amendment to the Trademark Law that aims to better protect exclusive trademark rights. Foreign companies in China shall take in consideration the following suggestions:

  1.       Try to register your trademark in as many categories as you can, or at least cover those related to your products. For example from 2006 Facebook registered a total of more than 60 trademarks in China, covering social work, photo sharing, electronic magazine, and even clothing. This can be a good instruction for you.
  2.       Set up a special department or entrust professional agency to monitor if there is any same or similar trademark on the market and take relevant measures to avoid trademark infringement.
  3.       Application for well-known trademark to maximize the protection of your trademark. Compared with ordinary trademarks, well-known trademarks have high visibility, high market share, and good reputation. It can be considered as the best way to protect your trademark at present.

The Trademark Law adopts a first-to-file rule for obtaining trademark rights. The first applicant to file an application for registration of a mark will pre-empt all other later applications for the same mark in the same class. If two or more applications are filed for the same mark in the same class on the same day, the trademark used first shall be accepted.

Let’s explain what it can happen if you don’t register your trademark in China with one famous case. Hermes, symbol of luxury, is one of the most illustrious trademark in the world and possesses the first class professional team of elite lawyers, though being such an economic giant, still HERMES lost its Chinese trade mark in China. So you may ask, why?

In 1977 Hermes registered its English name and pattern in China. However, its Chinese name has not been registered for the following 30 years. In 1995 a Chinese clothing company named Dafeng applied to the trademark board to register the trademark “爱玛仕” (AI MA SHI ) for its clothing products, which shares the same pronunciation with Hermes in Chinese.  Hermes then made the claim to cancel the disputed trade mark, but it was rejected by the court. Because in China only the first registered trademark can be protected.

Sometimes we may also encounter internet trademark infringement. One noted case is IKEA v. s. CINET. Cinet is a Chinese company who registered the domain name www.ikea.com.cn. Technically, at the very beginning, domain name was only the address of a web site on the Internet, however, domain name was now increasingly related to trademarks with the development of e-commerce, and that any activities in the cyber space should be deemed to fall into the scope of social activities in the material world.  Therefore, the use of the well known mark IKEA as a domain name had  taken unfair advantage of the goodwill vested in and associated with IKEA, and the court then held that CINET had violated the principles of fair competition and honest practice of trade and that the domain name www.ikea.com.cn should be suspended and canceled.

Several other international corporations are also involved in trademark disputes in China recently. Apple, producer of the iPad tablet computer, is involved in a legal dispute over the use of the iPad name on the Chinese mainland. Meanwhile, NBA legend Michael Jordan has filed a lawsuit against a Chinese sportswear producer, Qiaodan Sports Co. Ltd, which has registered and used brand same as Jordan’s Chinese name. So be aware of your trademark protection in China, all your business begins from it. And the more you pay your attention to it, the much more fair market it will ensure you.

 

Disclaimer 
This  publication is distributed solely for information purposes and does not constitute legal advice. 

Although all the information in this document was obtained from reliable official sources, no guarantee is given with regard to their accuracy and completeness.

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