Analysis The Litigant Strategies Of Foreign Well-know Trademark Infringement
Case: American Company A has started to register and use a trademark on the telephones
it produced since the 80s of 20th century, but the trademark is not registered in China. An Chinese Company A established in April 2009 in Beijing, has business relations with aforementioned American company A and has gotten written authorization from it to use the trademark on the telephones it produced since its establishment. Company B of Beijing established in 1993 registered the same trademark in 2007. It has not yet used the trademark on the telephones it produced, but uses other registered trademark on the telephones. When it found that company A of Beijing uses the same trademark, company B of Beijing sued company A of Beijing for its infringement.
Preliminary analysis of the case: it seems that company A of Beijing constitutes infringement. After all, it uses a registered trademark of another. However, the author believes that in light of the different situations, company A of Beijing might take the following litigant strategies with the assistance of a lawyer.
1. China and America are contracting countries of Madrid Agreement Concerning the International Registration of Marks, so China and America are both bound by the agreement. According to the Article 1[1], if the trademark of company A of America is registered at the International Bureau of Intellectual Property, American company shall not only in America but also in all the contracting countries of the agreement enjoy an exclusive right to use the trademark. In that case, American company A authorizes company A of Beijing to use the trademark in China is lawful and valid. Company A of Beijing can use the trademark lawfully.
2. If American Company A did not register the trademark at the International Bureau of Intellectual Property, it doesn't obtain the trademark right in China. Thus, company A of Beijing might countercharge company B of Beijing for infringement by the reason of the former has obtained the prior rights from company A of America. The obtaining of the prior rights involves the identification of well-known trademarks. According to Provisions for Identification and Protection of Well-known Trademarks, the following measures shall be taken to identify well-known trademarks: submitting an application of protecting well-known trademarks to Beijing Administration for Industry and Commerce and materials that may be used as the certification materials of a well-known trademark including:
a). relevant materials that can evidence the extent that the relevant public know the trademark;
b). relevant materials that can evidence the lasting time of the trademark, including the materials involving the history and scope of the use and registration of the trademark;
c). relevant materials that can evidence the lasting time, extent and geographic scope of any publicity work, including ways of adverting and promotion, geographic scope, type of publicity media and the quantity of the launched advertisements;
d). Relevant materials that can indicate that this trademark has been protected as a famous one, including the pertinent materials that the trademark has been protected as a well-known trademark in China, or in other country or region;
e). Other evidential materials that can indicate the trademark is famous, including the materials regarding the recent 3 years of output, sales volume, profit and tax turnover and sales territory of the principal commodities using this trademark. Industrial and Commercial Bureau shall submit the materials of this case to the Trademark Office. And the Trademark Office will identify whether it is a well-known trademark. The registration of company B of Beijing will be considered to be bad-faith registration while the Trademark Office identifies it is the well-known trademark, and company A of Beijing can use the trademark lawfully. If not, company B of Beijing shall enjoy an exclusive right to use the trademark and company A of Beijing will constitute infringement.
3. If the Trademark Office found that company B of Beijing obtained the exclusive rights to use the trademark lawfully, company A of Beijing shall prove that company B of Beijing didn't use the registered trademark actually and the use of the trademark for company A of Beijing didn't mislead the public. If company A of Beijing can prove that point effectively, its act of infringement of trademark is inadmissible. Under the Article 50(1) of Implementing Regulations of the Trademark Law of the People's Republic of China, "use any design which is identical with or similar to the registered trademark of another person on the same or similar goods, as the designation or decoration of the goods, which mislead the public" shall be the act to infringe the exclusive right to use a registered trademark defined in Article 52 (5) of the Trademark Law. According to afore-mentioned regulations, the act can constitute infringement only when it accords with the 3 conditions which are "identical or similar commodities" and "use any design which is identical with or similar to the registered trademark of another person on the same or similar goods, as the designation or decoration of the goods" and "mislead the public". So, even if company B of Beijing has obtained the exclusive rights to use the registered trademarks, it does not mean that it has the absolute right of the trademark. The functions of trademark and the roots to protecting trademark are the important basis for the public to distinguish the source of products and whether a trademark mislead the public or led confusion have been the bases to judge the infringement of trademarks.
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[1]. Madrid Agreement Concerning the International Registration of Marks Article1: Establishment of a Special Union. Filing of Marks at International Bureau. Definition of Country of Origin :
1. The countries to which this Agreement applies constitute a Special Union for the International registration of marks.
2.Nationals of any of the contracting countries may, in all the other countries party to this Agreement, secure protection for their marks applicable to goods or services, registered in the country of origin, by filing the said marks at the International Bureau of Intellectual Property (hereinafter designated as "the International Bureau") referred to in the Convention establishing the World Intellectual Property Organization (hereinafter designated as "the Organization"), through the intermediary of the Office of the said country of origin.
3. Shall be considered the country of origin the country of the Special Union where the applicant has a real and effective industrial or commercial establishment; if he has no such establishment in a country of the Special Union, the country of the Special Union where he has his domicile; if he has no domicile within the Special Union but is a national of a country of the Special Union, the country of which he is a national.
by: Sino-Link Consulting
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