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>> Welcome and thank you for standing by.
At this time, all participants are in a listen-only mode.
We will conduct a question
and answer session during the conference.
To request ask a question please press star 1.
Today's conference is being recorded.
If you have any objections, you may disconnect at this time.
I will now introduce your host for today's conference,
Ms. Janice Wingo with the International
Trade Administration.
You may begin.
>> Good morning and welcome to today's IP webinar.
Today, we're very lucky to have with us Dr. George Chan
who is a practitioner with Rouse in Beijing.
And today, Dr. Chan is going to speak to us
on how the Chinese courts define the scope
of protection for well-known marks.
Before Dr. Chan jumps into his presentation,
I wanted to remind you that this presentation is actually being
recorded and that those who have any questions
of Dr. Chan may email him.
Those listening to the recording can email him as well.
Dr. Chan has an LLB degree from the University of Ottawa
in Canada and then a PhD degree
in Experimental Medicine from McGill.
Prior to joining Rouse, he was a partner at a boutique IP firm
and at Rouse, he has extensive experience in--
[inaudible] international clients
with IP matters including patents, trademarks, copyrights
and IP strategy particularly the acquisition and enforcement
of an intellectual property rights.
We're very lucky to have George with us today
and we look forward to what he's got to say
about well-known marks.
>> Thank you very much for your introduction, Janice.
Yeah, I guess the starting point for this talk is that China
as a signatory country to the Paris convention
and the trips agreement provides extended protection
to well-known marks in accordance
with their international obligations.
This is codified certified under the Article 13
of China's Trademark Law.
Article 13, Section 1 codifies the rights afforded
to unregistered well-known marks such that
where a mark is a reproduction, imitation or translation
of a third-party's famous trademark
which has not been registered in China
and where the goods are identical or similar,
which may cause public confusion and damage the interests
of the registrant of the famous mark,
no registration shall be granted and the use
of the mark shall be prohibited.
Article 13, Section 2 on the other hand,
codifies the rights afforded to register well-known marks
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.
Where only the well-known mark
in the past during the early opening
up in market reform period of trying out,
we found that Article 13 Section 1
of the Trademark Law was relied upon what heavily
by trademark owners looking to prohibit third parties
from registering or using the well-known marks in China.
In recent years, you've seen that owners
of well-known marks are now not as dependent
on Article 13 Section 1 of the Trademark Law
as most well-known marks have already been registered
in China.
The pain points now are
where they are facing greater challenges is dealing
with fast-paced applications or registrations like third parties
for their well-known marks
that are directed towards dissimilar goods and services.
We are therefore seeing more reliant on Article 13,
Section 2 of China's Trademark Law
which provides owners well-known marks with a legal basis
of dealing with this type of activity.
Essentially, Article 13, Section 2
of the Trademark Law expands its global protection
for well-known mark so that they cover additional goods
or services not listed on the trademark registration.
Now, in spite of this growing alliance on Article 13,
Section 2 of the Trademark Law,
the test to obtain extended protection had been
in the past laid out in very big terms
with very little guidance provided by the courts
or the China Trademark Office.
More specifically, if we look at the very last portion
of Article 13, Section 2 which may mislead the public
and cause injury to the interests of the registrant
of the famous mark, no registration shall be granted
and the use of the mark shall be prohibited.
This has been for the less-- for the most part,
left open to interpretation on a case by case basis.
[ Pause ]
The State Administration of Industry and Commerce
which oversee the China Trademark Office issued the
Trademark Review and Adjudication Standards in 2005
which provided some conditions for the equitability
of Article 13 of the Trademark Law.
That is, the trademark must be registered in China
and is already well-known before the date of application
for the registration of the trademark in dispute;
the trademark in dispute constitutes a copy, imitation
or translation of the well-known mark; the service
or products represented by the trademark
in dispute are not the same as or highly similar
to those represented by the well-known mark; and,
the registration or use of the trademark
in dispute may cause confusion to the public recognition
and thereby, damage the rights and interests of the registrant
of the well-known mark.
However, we're looking at these--
you see that for the most part,
these regulations recite the Trademark Law
which are reproduce for your reference at the very bottom
such that it's a minimal--
it really provides very little guidance to practitioners
and trademark owners such that all we really see is [inaudible]
confusion being equated with misleading.
Now, this has pretty much been the status quo from 2005
until 2009 when the Supreme People's Court started
to take a more active role in defining this area of the law
such that the Supreme People's Court noticed
that in some cases, there were parties
that were abusing the well-known trademark status system in China
from material and commercial gains
and by taking steps primarily by issuing 2 legal instruments,
the first relates to civil litigation,
that is the interpretation
of several issues regarding application of laws
in protection of well-known trademarks
in trademark-related civil disputes.
The second relates to administrative litigation
and that is, the opinions
of the Supreme People's Court concerning the trial
of the administrative cases in respect
of trademark rights granting and confirmation.
Now--
[ Pause ]
Article 9, Section 2
of the Supreme People's Court interpretation provides
clarification for that portion of Article 13,
Section 2 which I raised earlier,
misleads the general public and leads to possible damage
to the interests of the registrant
of that famous trademark.
And more specifically, Article 9,
Section 2 of the Supreme People's Court interpretation
breaks down this part of Article 13, Section 2, the Trademark Law
so that misleads the general public, it's understood
to be there is a certain connection between the trademark
against which the lawsuit is lodged and the famous trademark.
And the portion, leads to possible damage to the interests
of the registrant of that famous mark, is to be understood
as the distinctiveness of the famous trademark if diluted
and the market reputation of the famous trademark is degraded
or the market reputation
of the famous trademark is improperly utilized.
[ Pause ]
Article 10 of the same interpretation lists the factors
that the court should consider when applying Article 9
of the interpretations to a particular case.
The first is, the distinctiveness
of the famous trademark.
The second is, how well the famous trademark is known
by the relevant general public
that uses the commodities using the trademark
against which the lawsuit is filed.
The third is, the connection
between the commodities using the famous trademark
and the commodities using the trademark
against which the lawsuit is filed,
and other relevant factors.
Now, the Supreme People's Court opinions,
Article 10 provides the basis for application of the test
that is found in the interpretation
to administrative dispute and that is the granting
or affirming of trademark rights.
Article 10 provides that when hearing administrative cases
on granting and affirming trademark rights
of well-known trademarks, the people's court may refer
to the relevant provisions such as Article 5, Article 9,
Article 10 of the Interpretation
on several issues concerning the application of law Trails
of Civil Dispute over well-known trademark protection.
Now, having laid out the current state of the law interpretations
and opinions to illustrate how these are applied
by Chinese court in determining the scope
of protection for well-known marks.
There are 2 cases that I'd like to share with you.
The first is Shanxi Xinghuacun Winery Company
and the Trademark Review and Adjudication Board.
The second case is Inner Mongolia Yi Li Industrial Group
Corporation and the Trademark Review and Adjudication Board.
The first case involving Shanxi Xinghuacun Winery Company.
Shanxi Xinghuacun Winery Company Winery Company is the
manufacturer of the Chinese wine Xinghuacun
and essentially Shanxi owned 2 prior trademark registrations
for Xinghuacun in Class 33 for white wine
and beverages, not including beer.
In 2002, Anhui Xinghuacun,
referred to Anhui files a trademark application
for Xinghuacun in Class 31 for forestry products, grains,
plants with seeds, brewing malt, et cetera.
Shanxi opposed Anhui's application on the basis
that their registered Xinghuacun mark was already well-known
and therefore this was entitled to a scope of protection
that precluded others from registering Xinghuacun
for forestry products.
[ Pause ]
At the opposition, the China Trademark Office was
of the opinion that Shanxi's Xinghuacun trademark was not
entitled to well-known status
and therefore approved Anhui's application for Xinghuacun.
And in doing, so they applied a test
which considered the popularity of a prior mark, the original--
the originality of prior trademark and relatedness
between designated goods of the disputed trademarks and those
of the prior trademark.
In this case, Shanxi appealed the CTMO decision to TRAB
and TRAB varied the China Trademark Office's
decision slightly.
Whereby TRAB decided
that Shanxi's registered trademark Xinghuacun was
well-known with respect to white wine.
However, they only provided--
the only expanded scope of protection
for this well-known mark slightly
so that it would also cover similar goods to those listed
on the Shanxi Xinghuacun trademark registration
and in doing so, they removed brewing malt
from Anhui's Xinghuacun registration
and brewing malt might be considered similar
to white wine.
[ Pause ]
So Shanxi further appealed the case
to the Beijing Number One Intermediate People's Court
which upheld TRAB's decision.
And in doing so, they cited the same reasons that TRAB did,
that was the word Xinghuacun was not originally created
by Shanxi, the significant differences
between the goods approved for Shanxi's Xinghuacun mark
that is white wine and the designated goods
of the disputed trademark, that is forced to be products
in grains with respect to the mode of production,
the sales channels and relevant consumers.
In addition, they held that the registration and the use
of the disputed trademark for forestry goods
and grains would not mislead the relevant public nor lead
to economic loss for Shanxi.
So Shanxi is not satisfied with this.
The results of their appeal have a second instance appeal
to Beijing Higher People's Court.
And on appeal, the main argument was that the standard
that the original decision adopted
by the Intermediate People's Court and TRAB was inconsistent
with the test outlined in Article 9,
Section 2 of the Supreme People's Court Interpretation,
that is the test adopted by TRAB
and the Intermediate People's Court considered the popularity,
originality of prior trademarks, and the relatedness of the goods
between the disputed trademark and those
of the prior trademark.
The Intermediate Courts focus on this concept of originality
or the creation of the mark.
The word Xinghuacun led the court to be more distinctiveness
of the Xinghuacun mark that belonged to Shanxi.
So on appeal to the Higher People's Court, the key issue
that the court had to address was.
what is the correct test
for identifying the appropriate scope for protection
for Shanxi's well-known mark?
[ Pause ]
In this case, the court held
that the appropriate test is laid out under Article 9,
Section 2 of the Supreme People's Court Interpretation
which stipulates the circumstances that are enough
to bargain use and registration of a mark than of a copy,
imitation or translation
of a well-known mark directed towards the similar goods,
that is where it is sufficient to make--
[ Pause ]
>> Kindly excuse me, this is the operator.
It looks like our leader disconnected,
one moment while I reconnect.
[ Pause ]
>> Hi this is Janice.
Since we have a technical difficulty,
can I just take a moment to remind the listeners
that there will be 2 webinars next month in October.
The first one will be on October 11th.
That is the webinar on protection of your marks
in trade fairs and then there will be a webinar one week later
on October 18th, that is on licensing your trademarks.
These are both by practitioners in China.
[ Pause ]
It's Janice.
We apologize for the technical difficulties.
The presenter, his line got dropped off.
You don't have a problem.
Your dialing is good.
Unfortunately, his line to Beijing got cut.
He will be dialing in again and we will resume the webinar
in about 2 or 3 minutes.
[ Pause ]
While I have you on the line as a captive audience,
I also wanted to plug for the stopfakes.gov website.
The stopfakes.gov website has a China toolkit along
with toolkits for other jurisdictions
where you can learn about IP rights and those jurisdictions.
Also, all the webinars--
past webinars, there's an audio recording of these webinars.
It's free.
You can get on and listen to any webinars
that you may have missed and most
of the participants have said
that they would welcome questions
so if you have any questions for the presenter, you can email
that presenter and ask her those questions.
[ Silence ]
>> And we have George Chan back.
[ Silence ]
>> My apologies.
I believe my call was dropped from a landline.
I believe I was informed by the moderator
that I dropped off about 2 slides ago.
So I'm just going to continue from the point
of where the application of the test for determining the scope
of protection for well-known marks and more specifically,
just looking at the 4 factors that the court will look at.
The first thing, the distinctiveness
of Shanxi's Xinghuacun mark, and in this case,
the High Court acknowledge that the mark was well-known
with respect to white wine and they also acknowledged
that the Trademark Review and Adjudication Board
and the First Instance court were correct
and that Shanxi did not coin Xinghuacun.
So this being the case, in the view of the High People's Court,
this concept of inherent distinctiveness will not usually
play a role in determining the scope of protection
for well-known marks such that their belief is
that a well-known trademark will have very high level
of distinctiveness because it's widely known amongst the
relevant Chinese public.
And this being the case, whether it's an inherently distinctive
trademark or not, it will not have much an effect on its scope
of protection ultimately.
The second consideration that the court looked
at was the relatedness
of the goods bearing the Xinghuacun trademark
and those bearing the disputed trademark.
And in this case, the Shanxi's Xinghuacun mark was approved
for use on alcoholic beverages which is significantly different
from forestry products and the like in terms
of production mode, sales channel,
target customers, et cetera.
Where the court had an issue with this concept
of inherent distinctiveness is with respect
to the public awareness
of Xinghuacun amongst the relevant public
that will consume or purchase forestry products that was--
the Xinghuacun was not created by Shanxi's
and it was actually coined by a very famous Chinese poet
of the Tang Dynasty named Du Mu.
And in the court's opinion,
if Anhui used the disputed trademark for trees or grains
and other similar commodities,
part of the relevant public would possibly associate
Xinghuacun with Shanxi.
However, in their opinion,
they would more likely associate it with Du Mu.
In addition to this, when they looked
at other relevant factors, this case is distinguished well
from earlier cases on the basis that this decision appears
to turn on the policy rationale outlined
by the Beijing Higher People's Court,
such that by providing Shanxi's registered Xinghuacun mark was
too wide of a scope of protection
across too many goods, this would be unfair
to other commercial operators looking to draw
on the historical and cultural goodwill
of Xinghuacun as a word.
In the words of the court, what's worth mentioning is
that others should not be prohibited from obtaining,
choosing, and setting up their own trademakrs
from the same public resource, Du Mu's verses,
so long as they do not cause injury to the interests
of Shanxi Xinghuacun Company and their Prior Trademark.
So, in this case, the Higher People's Court agree with TRAB
and the Intermediate People's Court as what they found
that the current circumstances do not fall within Article 9,
Section 2 of Supreme People's Court Interpretation.
Such that in their eyes and their opinion,
a certain connection between the trademark against the law--
which the lawsuit is lodged
and the famous trademark did not exist.
Accordingly, Anhui's Xinghuacun mark was accepted
for registration with respect to forestry goods and Class 11.
The second case which I'd like to share
with you is the Yi Li case involving Inner Mongolia Yi Li
Industrial Group Corporation and Trademark Review
and Adjufdication Board.
In 2000-- the year 2000, Wenzhou City Longwan Haicheng He Cheng
Water Heating Store files a trademark application for YiLi
in Lating characters and YiLi
in Chinese characters using the exact same Chinese characters
as that of the Inner Mongolia Yi Li mark to be used
in association with hydrants, bath fittings,
sanitary apparatuses and installtion.
Yi Li Corp. opposed the applications based
on its prior trademark right for YILI claiming
that its mark had been registered and recognized
as well-known by the China Trademark Office
in the year 1999 as being a well-known mark
and that their prior registration was entitled
to a broader scope of protection which covered other parties used
up in YiLi mark with goods in Class 11.
In support of their claim, Yi Li Corp. found evidence
that the YILI and its owner Yi Li Corporation are both
well-known with respect to dairy products.
Yi Li Corporation produces
over a thousand YILI branded products including popsicles,
ice cream, milk powder and similar goods.
And also that Yi Li Corporation was the exclusive provider
of dairy products for the 2008 Beijing Olympic Games
and the 2010 Shanghai World Expo.
On-- in January of 2005,
the China Trademark Office approved the applications
for the YiLi marks, such that while the-- in their opinion,
while the use of YILI on dairy products could be regarded
as well-known, the goods under Class 11
such as hydrants were sufficiently dissimilar
to Yi Li Corp's goods and that the opposed marks would
therefore not 'cause confusion amongst consumers.
Yi Li Corporations filed an appeal
against the China Trademark Office's decision
with the Trademark Review and Adjudication Board
and the Trademark Review
and Adjudication Board upheld the China Trademark
Office decision.
As part of their decision, they held that the opposed marks were
for use in association with Class 11 goods
which were sufficiently different from that
of dairy products on which the YILI well-known mark was used.
In addition to this, the Trademark Review
and Adjudication Board added
that YiLi was the transliteration
of the Erie Canal in the United States and therefore,
there was no unique connection between YiLi
and the well-known YILI mark.
And for these reasons, the TRAB held that the use
of the registration of the opposed marks
for Class 11 goods would not cause confusion nor
mislead consumers.
Yi Li Corporation appealed this--
the TRAB decision to the Beijing Number One Intermediate People's
Court which overturned the TRAB decision and in coming
to the decision, the First Intermediate Court considered
the factors as enumerated under Article 10
of the Supreme People's Court Interpretation, that is,
the distinctiveness of the well-known mark,
public awareness
of the well-known mark amongst the relevant public,
the relatedness of the goods bearing the well-known mark,
and those bearing the disputed trademark
and other relevant factors.
Looking at the distinctiveness of the YILI mark,
both the Trademark Review and Adjudication Board
and the Court agreed that the YILI mark was a well-known mark
with respect to dairy products.
Both the Trademark Review and Adjudication Board
and the Court agreed that due to the YILI mark being well-known,
the relevant public for Class 11 goods coming across these types
of goods affixed with YILI
or a YILI imitation mark would be familiar with the YILI mark
as used on dairy products.
Both the Trademark Review and Adjudication Board also agreed
that the goods were very different
and that relevant consumers the goods bearing the disputed marks
on Class 11 goods would not be confused
as to Yi Li Corporation being the source
of these goods nor were they being mislead to believe
that there is a commercial relationship
between Yi Li corporation
and the manufacturer of goods in Class 11.
Where this case-- where the Court looked
at other relevant factors such as the reputation of the mark
which the Trademark Review
and Adjudication Board did not look at, the court considered
that the reputation of the YILI mark had--
was very high amongst the relevant public.
And they also looked at this issue
of inherent distinctiveness again where perhaps came
to the conclusion that there was no unique connection
between YILI and dairy products.
There's a potentially another possible meaning
for YiLi as being Erie Canal.
The court held that this was [inaudible] connection
such that YILI and dairy products in the mind
of consumers far exceeds any other possible connection
or meaning to Yi Li such that you'll not find many
of the relevant public for these types
of goods familiar with the Erie Canal.
So, according to the Intermediate Court,
due to the higher reputation and distinctiveness
of the YILI mark, consumers would inevitably associate YILI
and Yi Li Corporation with any products bearing the YiLi mark.
In addition, the Intermediate Court held that the use
of the YiLi Marsk on hydrants would dilute its high
distinctiveness as a well-known mark, such that the use
of the disputed mark on sanitary apparatuses
and installations would cause consumers
to associate the YILI mark
with something unclean to its detriment.
In addition to this, the Intermediate Court held
that the high reputation that YILI mark
in China would be sufficient to lead Yi Li Corporation
to believe that the applicant
of the disputed mark had taken advantage
of the high reputation the YILI mark in the Chinese marketplace
and accordingly, the court overruled TRAB
for the above reasons.
The Trademark Review
and Adjudication Board appealed their decision
of the Intermediate People's Court
and the Higher People's Court arguing
that the court applied the test for dilution or Article 9,
Section 2 of the Supreme People's Court
Interpretation incorrectly.
More specifically, the Trademark Review
and Adjudication Board argued
that consumer confusion must exist as a pre-condition prior
to a dilution analysis being applicable.
And here, the Beijing High People's Court disagreed
with the Trademark Review
and Adjudication Board upholding the ruling
from the Beijing Intermediate People's Court.
Now, in their opinion, confusion is not necessary looking
at the test that is specified under Article 9,
Section 2 of the Supreme People's Court Interpretation
where it is sufficient to make the relevant public believe
that there is a certain connection between the trademark
against which the lawsuit is lodged and the famous trademark,
this is sufficient
for considering whether a well-known trademark should be
provided with extended protection.
[ Pause ]
So in looking at the facts of this case,
the Beijing Higher People's Court came to the conclusion
that there was a certain connection between the YILI mark
and the trademark against which the lawsuit was lodged.
And due to this connection between these 2 marks,
the distinctiveness
of the well-known YILI trademark would be diluted
and its reputation would be degraded as well as the fact
that this other company would be trade--
would be utilizing the YILI trademark
as a famous mark improperly.
And this brought this-- and this therefore allows the well-known
YILI mark to be entitled to a broader scope
of protection beyond the goods that is normally associated with
and list-- and those types of goods that are listed
on the trademark registration for YILI.
So in summary, looking at the history of the development
of this test for well-known marks,
the effect of that cross-class protection
for well-known marks is available in China.
However, not all well-known marks are entitled
to cross-class protection according
to Chinese law and practice.
And historically, this has been very difficult for us to explain
to our clients such that we did not have very much guidance
from the trademark office or the courts
as to how this test is applied.
However, the Supreme People's Courts have been more active
in this area as of late and they have introduced
to legal instruments to guide practitioners
and well-known trademark owners with regards to how to proceed
to protect the well-known trademarks of the broader scope
of protection for the similar goods and services.
For civil litigation, you can point to the test specified
under Article 9 of the Interpretation
from the Supreme People's Court and the same task may be applied
in administrative litigation according to the opinion
that was introduced
by the Supreme People's Court just last year.
Looking at--
[ Pause ]
In determining whether extended protection should be provided
for well-known mark, the courts have mentioned 3 factors
specifically, that is of distinctiveness
of a well-known trademark, the public awareness
of the well-known mark amongst relevant public,
and the relatedness of the goods bearing the well-known
trademarks and those bearing the disputed trademark.
There are other factors that are not enumerated
in the interpretation or the opinion and these are covered
in some cases such as inherent distinctiveness, the reputation
of mark and other items that might not be as applicable
for typical cases such as historical and cultural issues,
such as in the Xinghuacun case.
And that brings me to my last slide
and if there are any questions, I'd be happy
to answer them at this time.
Thank you very much for listening and for your patience
with the-- my dropping this call earlier.
>> Thank you.
We will now begin the question and answer session.
To ask a question, please press star 1.
Please unmute your earphone and record your name slowly
and clearly when prompted,
you may withdraw your question by pressing star 2.
Once again, to ask a question, press star 1.
One moment please.
>> If anybody is listening to the presentation
on the audio recordings, you can contact Dr. Chan at G-C-H-A-N
at I-P-R-I-G-H-T-S.com.
>> And we show no questions at this time.
>> Dr. Chan, there was a question that was emailed in.
The question asks, could you please identify how one--
please explain how one identifies a well-known mark?
>> Okay. The-- in the Supreme People's Court Interpretation
which outlines the test for determining the scope
of protection for well-known marks, there is also a list
of considerations that should be addressed prior
to obtaining well-known status.
And that is to prove on those status you'd show amongst
[inaudible] factors, one is under one heading,
you have the market share, the marketing region,
the profit or-- and the taxes
of the commodities using the trademark which you want
to prove to be well-known.
The second is the length of use of the trademark,
how long has the trademark owner been actively using this mark
in China.
Another would be the duration extent,
the amount of capital input into advertising the well-known mark
or the mark that you want to prove
to be well-known throughout China.
Another factor that you would look at is the history
of protecting this mark as a well-known mark in China.
Perhaps there was in earlier case
where the trademark owner was able to prove
that it was a well-known mark.
Another aspect that you'd show is the market reputation
of the trademark in terms of,
does it have a very high reputation similar
to the Yi Li case that we just recently covered.
And there is also one section which is basically a [inaudible]
for other factors that you might be able to rely or to prove
that your trademark is well-known.
>> Thank you Dr. Chan.
[ Pause ]
Again, we'd like to thank Dr. Chan for his presentation today
and if you have any questions on this presentation,
he is welcome on email.
I just wanted to remind the listeners that next month,
on October 11th, and again on October 18th,
we have 2 presentations.
The October 11th the presentation is
by George's colleague.
He will talk about protection at trade fairs in China
and another Chinese practitioner will present on October 18th
on licensing your trademark.
You can register at J-A-N-I-C-E dot W-I-N-G-O at trade.gov
or please get on the stopfake.gov website.
[ Pause ]
And operator, are there any more questions?
>> We show no questions at this time.
>> Well, George, again, we want to thank you
for your presentation and I suspect
that you will have a few emails when people go back
and listen again and ask you some more some more questions.
Again, thank you again.
>> Thank you very much Janice
for your assistance with this webinar.
It's greatly appreciated.
>> Thank you for joining today's conference.
You may now disconnect.