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 IN CHINA 6

WHEN TO FILE IN CHINA

First to file system

Now!

Don’t delay!

7


8

WHEN TO FILE

Potential Triggers

Doing business

Planning to do business

Contemplating maybe someday doing business

Launching something new

Manufacturing

9


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


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

11


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

12

TRADEMARK CLEARANCE IN

CHINA 13

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

14


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

15


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

16


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

17


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

18

NATIONAL VS. MADRID 19

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

20

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 OF NATIONAL

APPLICATIONS 22

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

23

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

24

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

25

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

26

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!

27

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

28

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

29

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

31

OPPOSITIONS AND APPEALS 32

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

33


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

34


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


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

36


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

37

PRESERVATION STRATEGIES 38

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

39


Monitor sites such as Alibaba, AliExpress, 1688,

Taobao, and T-Mall

40


41


Register copyrights in China and/or your home

jurisdiction

Berne Convention member state

Design patents – industrial designs

Anti-Unfair Competition Law (AUCL)

42

有问题吗？- QUESTIONS? 43

有问题吗？- QUESTIONS?

44

Lauren Emerson, Counsel, Leason Ellis, White Plains, N.Y.

[email protected]

Paul D. Jones, Principal, Jones & Co., Toronto, Canada

[email protected]

mailto:[email protected]


