Tag Archives: trademark agent

Infringing Goods shall not be Determined as Well-Known Goods

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Abstract: Under the circumstances of prior trademark rights on the same goods, determining similar trade name used by another person as the special name belonging to a well-known commodity shall be limited. Furthermore, the courts shall necessarily review the ownership of prior trademark as the fact of a case.

(By Luo Yanjie) The special name belonging to a well-known commodity is a protective approach for an unregistered trademark. In particular, the special name shall have no severability itself; otherwise, it shall be limited. In today’s post, we will introduce a case with this element with the following analysis:

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An Unregistered Trademark can be Licensed to Another Party for a Fee

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Abstract: An unregistered trademark may lawfully be licensed to another person. If any third party had registered the trademark, the licensor’s actions will constitute a breach of license contract. Except where the licensor has committed obvious fraud, the validity and effectiveness of such a license contract upon unregistered trademarks cannot be denied.

(By Luo Yanjie) Generally, a trademark in a trademark license should be registered before it is licensed to any other party. However, in today’s post, we will discuss a particular case there the trademark licensed was unregistered at the time the license was concluded. After being heard by two courts and the Supreme Court, such a trademark license contract was ruled to be valid. The following is our analysis.

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“Passive use” is not equivalent to “Prior use” under Article 31 of the Trademark law

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(By Luo Yanjie) Pursuant to Article 31 of the Trademark Law: anyone applying for trademark registration may not damage the existing rights of others obtained by priority, neither may it register, in advance, a trademark that has been used by others and has become influential. In practice, consumers apply a “name” to a product, which can then be considered a kind of “trademark” for the product itself. Is such passive use attributable to prior use? In regard to this legal issue, there are no actual legal provisions speaking to it in Mainland China. However, the answer in today’s post appears to be a resounding no.

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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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Analysis on Trademark Infringement Case of Adidas

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 (By Luo Yanjie) In 2001, the globally known sportswear brand Adidas acquired a trademark certificate issued by the Trademark Office of the State Administration of Industry and Commerce (“SAIC”), namely a certificate numbered 1489454 for the “three slants” trademark, which was approved in Class 25 for clothing, ball shoes, hats, socks and other similar products; in addition, the certificate numbered 1536558 for the “three slants” trademark was approved in Class 18, which covers bags, clothing case, traveling bags and belts. On June 21 2003, Adidas transferred the trademarks to its affiliates.

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A Brief Introduction to China’s Collective Trademark Application and Use System

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(By Luo Yanjie) A recent report said that the National Tourism Resort Brand Association for the well-known tourist attraction, Dian Lake in Kunming, received approval for a “D” type trademark certificate from the State Trademark Office—Yunnan Province’s first collective trademark. The above report shows that the collective trademark is of great value, but currently very few have been registered. What then are the features of the application and registration for collective trademarks compared with the normal ones? And, what factors should be noted for their use? In today’s post, we would like to share China’s collective trademark system with the reader.

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Could Nike Get the Trademark “Liuxiang”?

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(By Luo Yanjie) Recently, the lawsuit filed by Nike against China’s Trademark Review and Adjudication Board (“TRAB”) (note: the link is in Chinese) was heard in the Beijing No. 1 Intermediate People’s Court. The case was brought because TRAB refused Nike’s application to trademark Liu Xiang (刘翔) for the reason that the trademark had been registered by another company twenty six years ago, namely in July of 1986. At that time, a company named Shanghai Liuxiang Company applied for the trademark Liu Xiang Brand (刘翔牌) in the class of clothing, and the exclusive period for the use of that mark will last until 2017. Incidentally, the Liu Xiang Brand trademark happens to have the same name as the famous Chinese athlete, Liu Xiang. The case is currently being heard, but the author believes Nike has little chance of winning the case. Today’s will examine the issues involved in this case.

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How Companies in China Apply for Reserve Trademarks and Defensive Trademarks?

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(By Luo Yanjie) A reporter from China Industry & Commerce News asked the author how companies should apply for reserve trademarks and defensive trademarks. The interview is as follows:

1. How to decide between the registration of a reserve or defensive trademark?

Reserve trademarks are prepared for coming new business. Because the period from application to reservation requires one year, it is suggested to prepare some spare names for new products or services being prepared or under research and development. Then, before the product is released, the company can directly select and use a name it has already registered. Generally, it is only necessary to apply for the classes the company intends to adopt, and there is no need to register many other related classes.

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