Articles

Intellectual Property

Intellectual Property

By Evelyne Yeung and Vera Sung

 

Some foreign companies do not think of the importance of Chinese trade marks and simply register their trade marks in their foreign language, which may cause business challenges, especially in China.

Experience has shown us that, in China, if foreign companies do not have their Chinese versions of their original trade marks, people may tend to “invent” the Chinese nicknames or devise their own versions of the Chinese names for these marks, which may not match the business’ identities or images.

For a foreign trade mark owner, it is advisable to adopt a Chinese trade mark in addition to its mark in the foreign language. It will no doubt serve as an important marketing tool that will familiarize the Chinese-speaking people the company and its goods and/or services, especially in China.

The trade mark owner may choose a Chinese mark on the basis of its exact or similar transliteration (preferable) OR a direct translation of the original mark in foreign language. This may help Chinese-speaking people to correctly pronounce or better recall the original non-Chinese trade mark.

The Trade mark owner should also consider the meaning and the pronunciation (in Mandarin or Cantonese) of the combination of the chosen Chinese characters in the Chinese language before adopting them as their trade marks.

In practice, one Chinese version of the mark for all Chinese-speaking markets, i.e. China, Taiwan, Hong Kong and Macau, is sufficient.

Here are some examples:

LANEIGE (A French word which means “snow”)
兰芝 (China) / 蘭芝 (Taiwan) : Pronouns as “lan zhi” (resembles to the pronunciation of “LANEIGE”) and the combination of these two Chinese characters means “orchid flower”, which symbolic of high-minded individuals.

CHANEL (A French surname which means "pipe")
香奈儿 (China) / 香奈兒 (Hong Kong / Taiwan) : Pronouns as “xiang nai er” (closely similar to the pronunciation of “CHANEL”) which means “fragrance, bear, particle attached to noun” respectively.

It is also important to register the version of the mark which is (or will be) used in the country concerned, e.g. to register the simplified Chinese characters in China and traditional Chinese characters in Hong Kong, Macau and/or Taiwan.

Our experienced team will be pleased to advise on such trademark challenges.

 

This article is for information purposes only. Its contents do not constitute legal advice and readers should not regard this article as a substitute for detailed advice in individual instances.

By Vera Sung, Stephen Chan, and Vincent Fong

 

Trade fairs are a popular venue worldwide for entrepreneurs to display goods to a large number of potential customers.  However, trade fairs are quite often a battleground for Intellectual Property Right (“IPR”) owners and their competitors where early allegations of infringement are regularly made. 

This article outlines efficient ways in which these allegations of infringement can often be resolved.

 

TRADE FAIRS IN CHINA

 

i). Filing a Complaint

 

Trade fairs in China have become accustomed to resolving IPR disputes made during the relevant period of the trade fair or exhibition.  Depending upon the organizer, there will quite often be a set of prescribed rules and guidelines in terms of the procedure for filing a complaint and its resolution.

Generally, complainants will have the initial burden of proof to show infringement.  Such proof will generally include: 

 

  • Photos;
  • Samples of infringing goods;
  • Catalogue or brochure; and
  • Any other information supporting the alleged infringement.

For patent infringement, it is often difficult for a complainant to demonstrate infringement by examining the appearance of any particular product.  Often, marketing materials such as brochures may provide a useful guide in detailing any infringing technical features.

In advance of any trade fairs, IPR owners would be well-advised to prepare a requisite set of documents which can be used in support of any complaint against infringement, such as:

 

  • Certificate of registration of IPR; and
  • Certificate of Incorporation of the IPR owner;

It is important to ensure that all documents submitted comply with the trade fairs’ relevant procedures and guidelines, including any formality requirements such as translation, legalization and notarization.

IPR owners should submit any complaint with a trade fair organizer as soon as possible.  Due to the usual short duration of various trade fairs and exhibitions, it is of no use to an IPR owner if they file a complaint on the last day of the trade fair, only to find that by the time that the complaint is given any consideration, the trade fair has already come to an end. 

If infringement can be established, the organizer may remove the infringing items from display and prohibit the infringer from participating in the trade fair in the future.  Such a successful complaint can be significantly rewarding for the IPR owner as not only are the infringing items removed from display but the infringing party will inevitably suffer from negative publicity.

 

ii).  Invalidation Applications

 

If it is expected that a counter-party might raise allegations of infringement in China based upon a patent registered in China, it may be advisable to file an invalidation application against the registered patent owner prior to the commencement of the trade fair.

Any party may file an invalidation with the China Patent Office at any time, with supplemental evidence and grounds to be submitted within 1 month thereafter. 

Even if an invalidation application is not fully processed by the time the trade fair commences, it is still of significant importance because most trade fair organizers will expressly provide that they will not interfere with a dispute which is the subject of an invalidation application.  In such a way, an applicant of an invalidation applicant can gain temporary immunity from IPR owners who seek to complain on the basis of their registered patent in China.

 

TRADE FAIRS IN HONG KONG

 

Very often, IPR owners overlook registering their patent and designs in Hong Kong where trade fairs are very active all-year around.  Short of registration, IPR owners may still enforce their rights by means of copyright. 

Unlike China where there is a recordal of copyright and a copyright registration certificate is a pre-requisite for enforcement, Hong Kong has no such requirement.  Subject to the rules and procedures of each trade show, organizers may accept a complaint based on copyright if an appropriate affidavit is provided in accordance with the Copyright Ordinance (Cap. 529).   

OLN provides full range of IP services in China and Hong Kong.  Please contact our IP team at ip@oln-law.comfor further information on enforcement of your IPR at trade fairs. 

 

November 2016

 

This article is for information purposes only. Its contents do not constitute legal advice and readers should not regard this article as a substitute for detailed advice in individual instances.

 

Change in EU Trade Marks Law on Specification

Wednesday, 07 September 2016 12:23

By Vera Sung, Partner and Vincent Fong, Associate

Due to a change in the European Union trade marks law, a class heading under the Nice classification no longer interpreted as covering all the goods/services under such class. A class heading now only covers goods/services that fall under the literal meaning of that class heading.

For example, in the past the class heading of class 41 “Education; providing of training; entertainment; sporting and cultural activities.” would cover the services “translation”, after the change of the law the class heading of class 41 would no longer cover such item.

Who will be affected?

Trade mark owner who owns European trade mark (EUTM) that filed before 22 Jun 2012 covering an entire class heading in the specifications.

What action should be taken?
As a result of this change, the European Union Intellectual Property Office (EUIPO) allows owner of EUTM that is (1) filed before 22 June 2012, and (2) includes an entire class heading in the specifications, to file a declaration to declare its intention that the use of class heading was to cover goods/services beyond the literal meaning of the class heading.

The deadline to file such declaration is 24 September 2016. If the owner failed to file such declaration, the use of class heading in the specification would be deemed to cover goods/services under the literal meaning of the class heading. 

What you should do?
If you own a EUTM that is filed before 22 June 2012, you should review the specification and check if the literal meaning of the specification sufficiently cover all the goods/services of interest. 

How can OLN assist?
We can assist in identifying if the specification of the relevant EUTMs includes class heading, thus qualifying to file an Article 28 declaration. Further, we can advise the appropriate goods/services to be included in the declaration to protect your interest, and file the declaration on your behalf with the EUIPO.

 

This article is for information purposes only. Its contents do not constitute legal advice and readers should not regard this article as a substitute for detailed advice in individual instances.

With effect from 1 November 2015, China Government will freeze the official fee (previously levied at RMB800) for intellectual property right recordal with the General Administration of Customs of PRC (“GACC”).

Intellectual property right (“IPR”) owners may protect their rights in China by recording their intellectual property right with the GACC. GACC will detain the infringing goods entering and leaving China if they found suspected infringing goods based on the recorded intellectual property right and will inform the owners or owner’s agent. IPR owners may then take appropriate action against the infringer.

OLN provides full range of IP services in China and Hong Kong. For information in the procedures and the required documents for of PRC Customs recordal of IPRs, as well as how to anti-counterfeiting act by using the IPR recordal with the Customs, please send an email to ip@oln-law.com.  

With effect from 15 October 2015, China Government will reduce official fees concerning plant variety and copyright registrations as follows:

Item

Previous Fee

New Fee

Annuity  or Plant Variety Protection (7th and onward)

RMB1500

RMB1200

Application for registration for software copyright

RMB250

RMB200

Software copyright certificate fee

RMB50

RMB10

The other official fees relating to trademark remain unchanged.  

OLN provides full range of IP services in China and Hong Kong.  For information in protection of plant variety and copyright in China, please send an email to ip@oln-law.com.  

 

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