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Trademark Filing/Registration Statistics
Growth of Chinese Filings/Registrations
1998-2009: +550,000 registrations
2011: 13% of world’s applications
2012: 10 million registrations
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Why So Many Applications/Registrations?
Chinese economy
Multiple applications for a single mark
Single class per application
First to file system
Business of squatting / hijacking
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Client Considerations
Enforcement plan
Register ASAP
– File within 6 months of your U.S. registration
Multiple applications per mark
Pre-emptive measures
– Facebook model
– Neighboring countries
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Oppositions To Trademark Applications
Opposition Against Trademark Application
– 3 month Opposition filing deadline
• Employ watch service
– Filing Additional evidence 3 months later
• Statement in Opposition
– Full or partial opposition against goods/services
– 30 days for Applicant to file Response
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Oppositions To Trademark Applications
Opposition Against Trademark Application
– Some bases for opposition:
• Unregistered, well “known mark”
• Unregistered, used, and acquired certain influence
• Registered, well known in different goods/services
• other property right (e.g. name, copyright, portrait)
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Cancellation Of Registered Trademark
Three types of cancellations
– Non-use of a registered trademark
• 3 consecutive years of non-use
– Improper registration
• Absolute bar (e.g. generic)
• Acquired by fraud or other unfair means
– Disputed registration
• Identical / similar to registered mark for identical / similar goods
• 5 year filing deadline9
Landrover Company v. Geeley Group
Cancellation of “Lu Hu” (Landrover)
Article 31 of the Chinese Trade Mark Law
– the pre-emptive registration of a trademark that has been used before in China by another party, and such prior use has created a reputation for the mark, is a form of bad faith registration.
Past: recognized reputation cannot be created through media
Landrover: evidence of 41 news reports and media commentary supported claim of recognized reputation
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Enforcement Through Administrative Agencies
Administration for Industry and Commerce (AIC)
– Infringement complaint by trademark owner / licensee
– Investigating and seizing infringing product
Administration of Quality Supervision, Inspection and Quarantine (AQISQ)
– Quality of the products / bear name of another person
– Confiscation and impose fine
Customs
– Detain goods if Chinese trademark is registered with customs
– 3 business days to file application to detain and pay bond11
Enforcement Through Administrative Agencies
Benefits
– investigations can occur shortly after the filing of the complaint
– the right holders in some instances may participate in the investigations
– Short time before determination of infringement / non-infringement, and, if appropriate, the imposition of a remedy
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Enforcement Through Administrative Agencies
Disadvantages
– No compensation for infringement determination
– Local protectionism / corruption / lack of resources
– Fines too low to put the infringer out of business
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Enforcement Through Administrative Agencies
Considerations
– Register registered trademarks with Chinese and U.S. Customs
– Responsive contact for customs
– Chinese agency in place
• Verification detained goods are infringing
• 3 business days to file application to detain & pay bond
– Monitor market
• Surveys to identify infringers
• Watch service for Trademark Gazzette
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