Tag Archives: licensor

How to Judge the Validity of Trademark Transfer without Inner Approval of the Company in China

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(By Albert Chen) Abstract:

When a company’s trademark agent transfers a trademark without approval, a judgement of the validity of said transfer requires not only a consideration of the company approval, but also a determination of the third party good faith in the transfer. When a condition is not fulfilled the transfer will invariably be considered invalid.

Case Introduction:

In 2001, Leidi (China) Co., Ltd. (“Company L”) was granted the exclusive right in the use of the trademark “雷迪” (read as “Leidi” in Chinese). In November of 2002, Wu, as the executive director of Leidi China, transferred the trademark to the Hua Qu Duo Investment Company (“Company H”). The State Trademark Office made an announcement regarding the transfer in October 2003. Subsequently, Company H licensed the trademark to the Shanghai-based Leidi Mechanics Co., Ltd. (“Company S,” which had no affiliation with Company L).

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How to Judge the Validity of Trademark Transfer without Inner Approval of the Company in China

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Abstract:

(By Albert Chen) When a company’s trademark agent transfers a trademark without approval, a judgment of the validity of said transfer requires not only a consideration of the presence (or lack of) company approval, but also a determination of whether there was good faith when considering the third party in the transfer. When it can be shown that no inner-company approval was made, and that the transaction was not undertaken in good faith, such a transfer will invariably be considered invalid.

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Why Ultraman Movie‘s Copyright Holder Confronts Obstacle in Claiming His Right over Ultraman Doll?

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Abstract

(By Albert Chen) When the character in a film or television work satisfies the originality element, it could constitute as an independent work under the Copyright Law. But in that situation, the right holder of the film and television work could not necessarily claim the copyright over the character in it, and any infringement against the character shall be fought back by its designer or the licensee of the designer.

Case Summary

In 2009, China Shanghai Character License Administrative Corporation (“SCLA” hereinafter) gained the exclusive license from Tsuburaya Company for Ultraman Diga’s reproduction rights, distribution rights, rental and merchandising rights, and as well as the right to relicense the above rights within the territory of mainland China. After that, SCLA found that Hubei Xinyijia Supermarket Co., Ltd. ( “Xinyijia” hereinafter) has been selling out the Ultraman Diga toys, and thereafter SCLA filed their lawsuit in the court.

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An International Trade Dispute with Trademark Parallel Import Involved

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By Lear Gong

The author recently handled a lawsuit involving trademark parallel import. The case itself was not complicated: a famous American bedding design company (“US Company”) holds trademark A in both China and Japan. The US Company licensed a Shanghai home furnishing company (“Shanghai Company”) to manufacture and sell products marked with trademark A within the territory of mainland China. A Japanese home furnishing company (“Japanese Company”) offered to import trademark A furniture from China to Japan, but demanded a written license from US Company. With the promise from the Shanghai Company, the parties concluded a sales contract, but the clause on the Shanghai Company’s duty to get a license from US Company was not clear. From the time the contract was concluded until the products were delivered, the Japanese Company always urged the Shanghai Company to present it the certificate of license issued by the US Company, but the Shanghai Company did not reply or present the certificate. The Japanese Company moved to terminate the sales contract based on failure to perform. The Shanghai Company then filed a lawsuit against the Japanese Company demanding that it continue performance of the sales contract.

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