Brief Introduction of Trademark Law Development in China
Brief Introduction of Trademark Law Development in China Tim Meng, Managing Partner Goldent. Gate Lawyers Tmeng@Goldengatelawyers. com
Brief Introduction of Trademark Law Development in China Tim Meng, Managing Partner Goldent. Gate Lawyers Tmeng@Goldengatelawyers. com
Contents 1. New Trademark Law 2. Trademark Registration 3. IP Courts 4. Famous Cases
1. 1 History Aug. 23, 1982 Enactment Feb. 22, 1993 First Amendment To adapt to China's market-oriented economic system reform Oct. 27, 2001 Second Amendment To adapt to China's accession to the World Trade Organization May 1, 2014 Third Amendment To implement the national intellectual property strategy
1. 2 Main Changes The Latest Trademark Law: u shortens or newly sets time limit of trademark registration review and case trial uallows sound to be trademarked usubjects the infringer to a bigger burden of proof uemphasizes the principle of good faith uincreases the amount of statutory damage ustricter regulatory check for the trademark agency.
1. 3 Time Limits TIME LIMITS (Months) PROCEDURES INVOLVED 9 Preliminary Review on Application 9 plus 3 (Decision shall be made within 9 months by Trademark Office or Trademark Review and Adjudication Board upon receiving application, extension of 3 months in particular situations with approval Review on Refusal Review on Invalidity Announcement Application for Invalidity Announcement field by any organization or individual Application for cancellation of generic name Application for cancellation on grounds of non-use for three consecutive years Review on cancellation
1. 3 Time Limits TIME LIMITS (Months) 12 plus 6 (Decision shall be made within 12 months by Trademark Office or Trademark Review and Adjudication Board upon receiving application, extension of 6 months in particular situations with approval PROCEDURES INVOLVED opposition review of adjudication on opposition application for Invalidity Announcement field by holder of prior rights and interested party
2. 1 Current Situation With enhanced awareness of brand, the trademark registration applications increased dramatically. By the end of 2016, the quantity of trademark registration application is 3. 691 million, increasing by 28. 4% compared to the same period of last year, and the growth rate increases 1. 5% compared to last year. By the end of 2016, the accumulative quantity of validly registered trademark is 12. 376 million pieces. The quantity of the trademarks owned by every ten thousand market player is 1, 422 pieces, increasing by 6. 5%, compared to 1, 335 pieces at the end of 2015.
2. 2 Online Application Pursuant to paragraph 2, article 22 of the new Trademark Law, “the trademark registration applications and other relevant documents can be filed in writing or by other electronic means of data transmission. ” Online application accounts for 81. 3% of the total trademark registration applications in 2016.
3. 1 Establishment ØInitial Three IP Courts. On August 31, 2014, the 10 th Meeting of the 12 th session of the Standing Committee of the National People's Congress of the People’s Republic of China issued the Order on Setting up intellectual property Court in Beijing, Shanghai and Guangzhou. Beijing IP Court was established in November 2014, which was followed by Shanghai and Guangzhou in December 2014, in a broader reform aimed at introducing specialised courts to adjudicate IP and technical complex cases. ØLatest Two IP Courts. With the approval of the Supreme People’s Court, on January 19, 2017, another two IP Courts were established in Nanjing and Suzhou Respectively.
3. 2 General ØCharacteristic. Considering the professionalization of intellectual property cases, technical investigator department was set up in these courts. Full-time or part-time technical investigators were employed to play an important supporting role and provide assistance in ascertain technical-related facts. ØReason for Choice of Location. As the key cities of traditional economic circles in mainland China, these cities have higher level of economic and technological development, more quantity of high-tech enterprises and stronger demand for protection of innovation. ØCase Load. As of August 20, 2015, a total of 10, 795 cases of various types were accepted by three IP courts, out of which 4, 160 cases had been decided. The trial efficiency has improved obviously.
3. 3 Beijing IP Court Taking Beijing IP Court for example: According to data analysed by IP House and released during a press conference in Beijing on April 15, 2016, at the presence of prominent representatives of the Beijing judiciary and foreign embassies, it handled a remarkable number of more than 5. 432 (five thousand four hundred thirty two) cases in the course of 2015 and decided 3. 449 (three thousand four hundred forty nine) administrative IP cases and 1. 573 civil IP-related civil litigations. It accepted an average of 800 cases monthly. Among these, 3. 379 cases concern validity of IPs granted by the State Agencies, where trademarks, copyright and patents account for 96. 4% of the total respectively. Beijing IP Court enjoys exclusive jurisdiction over administrative decisions on registered IP rights issued by the central authorities.
3. 3 Beijing IP Court
3. 3 Beijing IP Court
3. 3 Beijing IP Court According to these data, 1. 095 cases (roughly 22%) involve foreign parties (“Foreign-related Cases”), with the breakdown in following page. 21. 80% [1, 095]
3. 3 Beijing IP Court Breakdown of Foreign-related Cases Ranking Country (Region) Number of Cases Percentage 1 America 382 34. 32% 11 Netherlands 25 2. 25% 2 France 123 11. 05% 12 Sweden 20 1. 80% 3 Germany 105 9. 43% 13 Denmark 16 1. 44% 4 Japan 68 6. 11% 14 Finland 14 1. 26% 5 British 65 5. 84% 15 Spain 14 1. 26% 6 Swiss 46 4. 13% 16 Luxembourg 13 1. 17% 7 Italia 39 3. 50% 17 Canada 11 0. 99% 8 Korea 32 2. 88% 18 Belgium 10 0. 90% 9 British Virgin Islands 30 2. 70% 19 Australia 8 0. 72% 10 Singapore 28 2. 52% 20 Brazil 6 0. 54%
3. 3 Beijing IP Court Breakdown of Foreign-related Cases Ranking Country (Region) Number of Cases Percentage 21 Ireland 5 0. 45% 33 Seychelles 2 0. 18% 22 Malaysia 5 0. 45% 34 Turkey 2 0. 18% 23 Thailand 5 0. 45% 35 Bulgaria 2 0. 18% 24 British Cayman Islands 4 0. 36% 36 Greece 1 0. 09% 25 Chile 4 0. 36% 37 Columbia 1 0. 09% 26 Pei. Ji 3 0. 27% 38 Cuba 1 0. 09% 27 New Zealand 3 0. 27% 39 Chech 1 0. 09% 28 Austria 3 0. 27% 40 Burma 1 0. 09% 29 Russia 3 0. 27% 41 South Africa 1 0. 09% 30 Israel 3 0. 27% 42 Saudi Arabia 1 0. 09% 31 India 3 0. 27% 43 Slovakia 1 0. 09%
3. 3 Beijing IP Court A total of 169 Agencies Representing Foreign-related Cases, further analysis is as follows: Region Number of Agencies Representing Foreign- related Cases Percentage Beijing 132 78. 10% Shanghai 23 13. 60% Guangdong 8 4. 73% Hubei , Fujian, Shenzhen, Tianjin, Sichuan, Shandong 1 3. 57% Note: The table shows that the agencies which engage in foreign-related IP lawsuit mainly locate in Beijing and Shanghai, particularly Beijing.
4. 1 Name Protection
4. 1 Name Protection Michael Jordan is arguably the most famous foreign basketball star in China and is known in the county as "Qiaodan", the Chinese translation for his surname. Case Review: ØIn 2012, Jordan accused Qiaodan Sports Co. , a Chinese sportswear and shoe manufacturer (“Qiaodan Sports”), of unauthorized use of his name and identity. Jordan lodged an appeal to the Trademark Review and Adjudication Board of the State Administration for Industry & Commerce to revoke the trademark of Qiaodan Sports Co, but his request was rejected. ØLater, Jordan filed two lawsuits against the adjudication of the trademark authority but lost the case in both trials (first instance before the Beijing First Intermediate Court and then second instance before the Beijing High Court). ØIn 2015, Jordan appealed to the Supreme People's Court (SPC) for a retrial the cases involving 68 disputed trademarks, out of which the SPC accepted the appeal of the cases involving 10 disputed trademarks on the basis of the Administrative Procedural Law. ØOn December 8, 2016, the SPC held that three trademarks, as the Chinese translation of Jordan, prejudice the right of name of Jordan and shall be revoked.
4. 1 Name Protection ØWhat law are we dealing with here? This case was built around: (1) Trademark Law, Article 31, which says: An application for the registration of a trademark shall not create any prejudice to the prior right of another person, nor unfair means be used to pre-emptively register the trademark of some reputation another person has used. The court specifically referred to “prior rights” of others (in this case, the right of name); (2) the General Provisions of the Civil Law, which among other things protects “personal name” rights in Article 99, which says: Citizens shall enjoy the right of personal name and shall be entitled to determine, use or change their personal names in accordance with relevant provisions. Interference with, usurpation of and false representation of personal names shall be prohibited. ØThree Requirements for Name to be Protected: According to Tao Kaiyuan, the presiding judge of the case and vice President of the Supreme People's Court, the specific name to be protected by the right of name shall satisfy the following three requirements: (1) the specific name have certain popularity and known by the public in China; (2) the specific name is used by the public to refer to a particular natural person; (3) a stable corresponding relationship between the specific name and the natural person has been established. ØSignificance. In past domestic judicial practice, the standards and requirements for protection of prior right of name as involved in trademark administrative disputes had been unclear. The requirements set forth by SPC in this case will have important influence on the establishment and unification of standards of similar cases.
4. 1 Well-known Trademark Protection ØCase Brief. The plaintiff Deere, based in the United States, is one of the world's largest manufacturers of agricultural machinery, diesel engine and construction machinery, etc. Deere and its Chinese subsidiaries own a series of trademarks registered in China. John Deere (Beijing) Agricultural Machinery Co. , Ltd. and two other defendants established several enterprises in China under the name of “John Deere” and registered the trademark “Jialian Deere” which is similar to the trademarks of plaintiff. ØApplicable Law. According to article 13 of Trademark Law, stronger protection of spanning different categories is given to famous trademark, which says “Where a mark is a reproduction, imitation, or translation of a third-party’s famous trademark which has been registered in China and where the goods are not identical or dissimilar, which may mislead the public and cause injury to the interests of the registrant of the famous trademark, no registration shall be granted and the use of the mark shall be prohibited. ” ØSo how about the dispute concerning identical or similar goods, the law is silent.
4. 1 Well-known Trademark Protection ØHighlights of Judgment. In this case, the court gave judgment in favor of the plaintiff. It held that in the event of disputes between famous trademark and common registered trademark on the same or similar goods, the court may accept the case directly and render judgment by reference to article 13 of Trademark Law. The court also held that unauthorized use of third party’s enterprise name or name for purpose of misleading the public to believe that there is connection between it and the third party will constitute unfair competition, which shall be forbidden. Besides, the court upheld the plaintiff’s request for compensation in amount of five million yuan in full and explicit the specific calculation method of compensation in the judgment. ØGuiding Significance. This case will have guiding significance on improving and intensifying IP protection in the future. During the press conference of the second anniversary of Beijing Intellectual Property Court held on January 10, 2017, this case was rated as typical case of "intensified judicial protection of intellectual property".
Thank you!
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