Brand Protection In China Eligio Pimentel

Trademark Filing/Registration Statistics Growth of Chinese Filings/Registrations  : +550,000 registrations  2011: 13% of world’s applications  2012: 10 million registrations 2

Growth In Trademark Registrations ( ) 3

Trademark Applications ( ) 4

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 5

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 6

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 7

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) 8

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 deadline 9

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 10

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 bond 11

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 12

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 13

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 14

Thank You Eligio Pimentel