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Trademark Enforcement in China (Section I)

Trademark rights enforcement is an important way for trademark rights holders to combat all kinds of infringement, prevent the dilution of trademark rights, as well as actively protect their legitimate rights and interests. It is also one of the important ways to achieve the value of registered trademarks. According to the circumstances in which the infringement occurred, the legal procedures to which the infringing trademark belongs, the status of use and other factors, the trademark rights enforcement cases mainly include the following two types:

 

Type

Content

Trademark ownership dispute cases

Trademark Enforcement in China (Section I)Trademark squatting means preemptively registering an enterprise trademark or a trademark similar to it on the same or similar goods/services; Or preemptively register the civil rights and interests such as the patent right and copyright of the prior design of the enterprise as a trademark.

Trademark Enforcement in China (Section I)  Trademark free riding means the trademark applied for registration by another person has a certain degree of correlation with the trademark owner (such as complete inclusion, deformation, or various combinations with other elements, etc.), which may lead to improper association or confusion or misidentification by the relevant public.

Trademark Enforcement in China (Section I)  Other trademark violation mainly includes the trademark of another person violates the provisions of the Trademark Law and may affect the industry order and market operation of the enterprise to which the enterprise belongs.

Trademark use infringement or unfair competition cases

Trademark Enforcement in China (Section I)  Interpretation: Without the permission of the trademark rights holder, others engage in various acts that damage the exclusive right to use the trademark of the trademark rights holder in violation of the law.

Trademark Enforcement in China (Section I)  Legal basis: Article 57&58 under PRC Trademark Law; Article 6 under PRC Anti-Unfair Competition Law; Article 13 under the Interpretation of the Supreme People's Court on Several Issues Concerning the Application on PRC Anti-Unfair Competition Law; Article 1 under the Interpretation of the Supreme People's Court on Several Issues in the Trial of Civil Trademark Dispute Cases; Article 1&2 under Interpretation of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Civil Dispute Cases Involving the Protection of Well-known Trademarks; Article 4 under Provisions of the Supreme People's Court on Several Issues Concerning the Trial of Civil Dispute Cases Involving Conflicts between Registered Trademarks, Enterprise Names and Prior Rights; Article 4 under Interpretation of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Civil Disputes Involving Computer Network Domain Names etc.

Trademark Enforcement in China (Section I)The main manifestations of infringement:

(1) Without the permission of the trademark right holder, the same trademark as its registered trademark is used on the same kind of goods by others; 

(2) Without the permission of the trademark right holder, using a trademark similar to its registered trademark on the same kind of goods which is likely to lead to confusion;

(3) Without the permission of the right holder, using a trademark identical or similar to its registered trademark on similar goods which is likely to cause confusion;

(4) Selling goods that infringe others registered trademark exclusive rights;

(5) Forge or manufacture registered trademark marks without authorization, or sell forged or unauthorized registered trademark marks;

(6) Without the consent of the trademark right holder, replace its registered trademark and put the goods with the changed trademark into the market;

(7) Intentionally facilitating infringing acts and assisting others to commit acts infringing the exclusive right to use a trademark;

(8) Reproduction, imitation or translation of a well-known trademark registered by the trademark right holder or its main part is used as a trademark on different or dissimilar goods, misleading the public and causing damage to the interests of the registrant of the well-known trademark;

(9) Reproduction, imitation, or translation of a well-known trademark not registered in China by the right holder is used as a trademark on the same or similar goods, which is likely to lead to confusion;

(10) The prominent use of words identical or similar to the registered trademarks of others as the trade name of an enterprise on identical or similar goods which is likely to cause misidentification by the relevant public; 

(11) Misleading the public by using other people's registered trademarks or unregistered well-known trademarks as trade names in enterprise names.

(12) E-commerce in which words that are identical or similar to the registered trademarks of others are registered as domain names, and related goods are traded through such domain names, likely to cause misidentification by the relevant public.

(13) The domain name or its main part constitutes the reproduction, imitation, translation, or transliteration of the right holder's well-known trademark.

(14) The domain name or its main part is identical or similar to the registered trademark, domain name, etc. of the right holder, which is sufficient to cause misidentification by the relevant public.

 

In implementing the trademark rights protection, it is necessary for enterprises to do a good job in three aspects: monitoring of infringement clues, investigation of infringement information, and crackdown on trademark infringement based on the specific scenarios of trademark rights protection.

 

In this section, the author mainly focuses on strategies for protecting rights related to trademark ownership dispute cases.


Strategy 1: Trademark monitoring

Dimensions

Priorities

Trademark lists

Enterprises can form a trademark monitoring list around the following dimensions and carry out comprehensive, dynamic, and accurate management:

Trademark Enforcement in China (Section I) Trademark signs: Screening trademarks that are identical or similar to the core important trademarks of the enterprise, enterprise names, well-known work logos, designs, etc.

Trademark Enforcement in China (Section I) Specific entities: Based on the past applications or actual infringing use, a list of specific infringing entities could be counter-launched. Their behavior models should be analyzed, and the entities should be included in the scope of monitoring.

Trademark status

Trademark Enforcement in China (Section I) Trademark Status: The latest legal status of the target trademark.

Trademark Enforcement in China (Section I) Strike time nodes: time nodes when legal procedures (opposition, invalidation, non-use of cancellation for three consecutive years, etc.) can be taken against the target trademark. If time limits are involved, they shall be included in the scope of monitoring.

Class scope

Trademark Enforcement in China (Section I) Core trademark: All the classes

Trademark Enforcement in China (Section I) Important trademarks: Core classes and strongly related classes (such as trademarks used in pharmaceutical, usually the scope of trademark monitoring will cover health care products, cosmetics, and medical devices etc.).

Trademark Enforcement in China (Section I)Ordinary trademarks: Core classes

Monitor frequency

Trademark monitoring can be carried out periodically around the characteristics of relevant legal procedures, the legal time limit period, and the number of trademarks monitored.

Trademark Enforcement in China (Section I) Trademark opposition monitoring can be carried once a week or month;

Trademark Enforcement in China (Section I) Cases that can be dealt with by other legal procedures, such as revocation or invalidation, can be monitored once a month.

Monitoring implementation

Trademark Enforcement in China (Section I) Trademark monitoring involves accurate grasp of trademark professional knowledge and the latest developments in trademark practice. Thus, it is recommended to entrust professional service institutions to carry out it.

Trademark Enforcement in China (Section I) In order to avoid information omission, enterprises can entrust multiple back-to-back monitoring and information feedback.

Strategy 2: Trademark investigation, related evidence collection and preparation

Dimensions

Priorities

The applicant's condition

Trademark Enforcement in China (Section I)The applicant's establishment time, business scope, scale, and business health status.

Trademark Enforcement in China (Section I)The applicant's associated entity.

Trademark Enforcement in China (Section I)The applicant's association with your enterprise (whether it is a partner of your enterprise, or you are both in the same region, industry, etc.).

The applicant's actions

Trademark Enforcement in China (Section I) Whether it applies for a large number of trademarks or applications for registration of trademarks on its own or through affiliated entities fall in certain specific industries and fields.

Trademark Enforcement in China (Section I) Whether it has a track record of peddling the transferred trademark.

Trademark Enforcement in China (Section I) Whether there are other facts or conclusions that have been established in the ruling related to the applicant.

Trademark Enforcement in China (Section I) Whether the applied trademark is actually used, related usage, etc.

Trademark Enforcement in China (Section I) Whether the applicant has a record of penalties in the trademark field.

Strategy 3: Make full use of legal provisions, accurately grasp review trends, and choose the most appropriate way to protect rights

Dimensions

Priorities

Legal procedures

 

Review time limit

 

Startup requirements

Trademark Enforcement in China (Section I)Trademark opposition: Within 3 months after the announcement of the preliminary approval of the trademark; the examination period is about 9-12 months.

Any person may raise an opposition based on Articles 4, 10, 11, 12 and 19, Paragraph 4 of the PRC Trademark Law; An opposition based on Articles 13, 2, 3, 15, 16, 1, 30, 31 and 32 should be filed by the prior right holder or interested party.

Trademark Enforcement in China (Section I) Invalidation: The review period is about 9-12 months.

Anyone can file a claim based on Articles 4, 10, 11, 12 and Paragraph 4 of the Article 19 under the PRC Trademark Law, or if it is considered that the claim for registration obtained by deception/other improper means is invalid; If an invalidation is claimed based on Paragraphs 2, 3 of Article 13, 15, Paragraph 1 of Article 16, 30, 31 and 32 of the PRC Trademark Law, the prior right holder or interested party can file a claim within 5 years from the date of registration of the trademark. Facing malicious registration, the owner of a well-known trademark is not subject to the 5-year time limit. After an invalid registered trademark is declared invalid, the exclusive right to use the trademark shall be deemed to have ceased to exist ab initio.

Trademark Enforcement in China (Section I) Trademark non-use cancellation for three consecutive years: the examination period is about 6-9 months.

After 3 years of registration, anyone who believes that the trademark has not actually been used can file a claim; If evidence of use cannot be provided or the evidence does not comply with the law, the trademark expires from the date of cancellation.

Others

Trademark Enforcement in China (Section I)In invalidation proceedings, enterprises should pay special attention to striking a balance between 'maximizing the application of the law' and 'against double jeopardy'. Enterprises must fully consider the examination practice of the competent authorities to avoid situations that too many legal claims are invoked at one time and are not supported, resulting in subsequent inability to protect their rights (such as requesting recognition of well-known trademarks).

Trademark Enforcement in China (Section I)Pay attention to the accurate selection of cited trademarks, especially to avoid omitting cited trademarks on goods in other similar groups and across classes.

Trademark Enforcement in China (Section I) Make full use of the relevant policy guidance of the competent departments to take advantage of the situation to achieve the effect of rights protection. For example, for trademark applicants who has been determined to be malicious in the earlier judgments, enterprises can provide reporting clues to the CNIPA through relevant channels. In addition, enterprises can also try to file a complaint with the market supervision and administration of the malicious applicant’s location and request penalties on it.

 


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