This article has been written by Md. Omar Faruque Munshi, pursuing a Diploma in Intellectual Property, Media and Entertainment Laws from LawSikho. It has been edited by Aatima Bhatia (Associate, LawSikho) and Smriti Katiyar (Associate, LawSikho).

Introduction

Companies decide to operate multinational business operations upon considering different factors like production cost, market opportunity, extension of business through licensing, among others.

Despite the calculation involved in each of these factors, unwary companies are likely to make mistakes if they fail to set appropriate strategies to protect the trademarks of their products. These trademarks require an analysis of all risk factors as they are deeply rooted in country-to-country legal variations.

It might happen that an MNC which has its trademark registered in its home country, in the course of doing business its trademark has been taken over by some other person registering an identical or similar trademark blocking its business or diluting its brand identity in that of another country it invested in or prospective countries of investment also. These are the events of trademark piracy or squatting done by the ill motivated persons (hereafter referred to “the trademark squatters”) attempting to execute their plot by the distorted use of law. This article will analyse the legal environment for trademark piracy of MNCs in China as it is one of the main choices of foreign investors’ investment, the recent administrative and judicial steps countering trademark piracy, and required strategy for MNCs.

Hazards of trademark piracy

Trademark piracy is occurs when  a person (the trademark squatter) tends to establish the claim over the trademark of a foreign investor who has registered its trademark in respect of its goods or services in its home country but lacks registration in that other country where it has invested. Taking opportunity of this situation of foreign investor, the trademark squatters attempt to secure their improper gain by registering the identical or deceptively similar trademark with the motive of blocking the foreign investors in entering into the new market with their brand (e.g. Tesla Motor in 2013), or secure a bargain reselling the pirated trademark to the foreign registered brand owner (e.g. Apple in 2012, and Uniqlo Trading Co. Ltd. case in 2018), or secure a business gain with marketing the product of trademark squatters using the goodwill of foreign brand (e.g. Michael Jordan vs Qiaodan Sportswear Co. in 2012, also see 8 years legal battle of Michael Jordan that ended in 2020). Often also the trademark pirates work as a part of trademark pirating syndicates. Besides blocking the foreign investor’s trade in the squatting country, the shrewd squatter may register the pirated trademark in other countries also in a premeditated way to block the business of the original brand owner in possible other countries of business expansion. The trademark squatting or piracy amounts to debilite brand identity, loss of goodwill, loss of revenue earning, entail costly legal battle, and many business hazards for MNCs.

The legal context of China for trademark piracy or squatting

The WTO Analytical Index of TRIPS Agreement – Article 51 (Jurisprudence) defined the conduct constituting trademark piracy as below:

“Pirated copyright goods” shall mean any goods which are copies made without the consent of the right holder or person duly authorized by the right holder in the country of production and which are made directly or indirectly from an article where the making of that copy would have constituted an infringement of a copyright or a related right under the law of the country of importation [1].

The registration of trademark gives protection to the trademark owners giving right to prevent anyone from unauthorized using the identical or similar trademark for goods or services in the course of trade where such use would create a likelihood of confusion among the potential customers of the goods or services for which the mark is registered. But the operation of the trademark law is territorial meaning that the protection to the trademark is available only within the country in which it is registered. The only exception is the trademark having cross border reputation (termed as the well-known trademark) with relevant consuming public within the territory in which the protection claimed.

From the said territoriality principle, it entails that the MNCs who have their trademark registered in one country, also required to register their trademark in another country or countries also where they wish to establish their business connection. To secure this trans-border registration there are two ways— (i) individual country to country registration; and (ii) international registration under the Madrid Protocol. This matter is discussed later in this paper under the heading “trademark strategy for MNCs”.

Difficulty arises in availing the protection of trademark in the country where the law provides registration of the trademark following the principle of “first to filing the application basis” rather than “first to use basis”. Countries like China, Japan, France, Spain, Germany, Canada and many countries of EU provide for the trademark registration on “first to apply basis” whereas UK, India, Australia, USA, etc. provide for registration of trademarks on “first to use basis”. Legal recognition of Trademark rights to the first user of the mark defeats the registration by the subsequent user of the identical or similar deceptive mark in relation to the business of similar goods or services. 

Since China is a country which provides registration on “first to filing application” basis, and does not recognize the “common law” prior user right of the trade mark, the risk arises for an MNC is that even if it has the evidence of a long track of using a trademark in relation to its goods or services, if it fails to file early the “application for trademark registration” in China, it may happen that some other person with the motive of blocking its business do registration of the identical or similar trademark taking advantage of the “first to file” principle, and secure its upper hand over the foreign investor’s market of the goods or services with this pirated trademark. Often the shrewd Trademark Squatters then also brings this pirated mark into the record of the Customs Authority as the owner of it so as to prevent the import or export with this mark by anyone else as would be treated as infringement of its trademark right under the law. Thus the MNC who is the original owner of the trademark registered in its home country, now is blocked in doing trade, export or import of its goods or services in or outside from China. The trademark squatter may further tend to block the business of the targeted MNC in expanding its business to other possible countries also securing the registration of the same in those other countries on the basis of its China registration. Certainly this is a very difficult position for the MNC which then has to pay a great cost for being unwary in setting its required trademark strategy explained in this article below.

Legal uncertainty of protecting trademarks of OEM goods in China

In this present globalized economy it is now increasing practice that companies having their trademark registered in their home country choose to manufacture their branded goods in another country considering the availability of raw materials, labour skill, machineries, technology, production cost, etc. The companies which manufacture products for the foreign brand holder under the manufacturing contract are called Original Equipment Manufacturing Company (OEM). China is well known for manufacturing the OEM goods. These OEM factories do not engage in the production of goods for the sale in the country of manufacture itself, but for export to the foreign brand owner who has engaged them in the production of goods with the foreign brand identity. Piracy of MNCs trademark by the trademark squatting syndicates in China in the course of manufacturing the OEM goods are mentionable. The great legal uncertainty in this area exists created by the judicial decisions which are discussed below.

Focker v Yahuan, (2014) (also known as “PRETUL Case Decision”) [2]

In this case, a Mexican company TRUPERSA who had its trademarks “PRETUL” and “PRETUL & oval device” registered in Mexico and in some other countries also since 2003, employed an China OEM company named Zhejiang Pujiang Yahuan Locks Co. Ltd. (hereinafter referred to as “Yahuan”) to produce locks, keys bearing its trademark and use it in the packaging. Thereafter another individual registered the trademark “PRETUL & oval device” in China for the similar goods of the said Mexican Company and in 2010 assigned the trademark to Focker Security Products International Limited (hereinafter referred as “Focker”). In addition to such registration of the said trademark, Focker with a motive to ban the export and import of the product bearing this mark by anyone else recorded this mark with the China Customs Authority. The OEM Company Yahuan, upon manufacturing the goods when advanced to transport them to its foreign brand holder TRUPERSA, was subjected to the seizure by the Customs Authority as attempting to transport counterfeited products, and the authority then informed the Focker about this seizure. Focker thereafter instituted legal proceedings in the civil court against the Yahuan for the infringement of its trademark, sought for an order of injunction and compensation on the said infringement.

In the said proceeding, the Yahuan attempted to escape the infringement proceeding by filing a response contending that the products were manufactured authorized by TRUPERSA, a Mexican company, and were intended for export purpose only, without intention for domestic sale or distribution in China. As such no cause of confusion can arise among the relevant public in China about the goods of Focker, and therefore, no infringement occurred to the trademark in China as alleged by the plaintiff.

The legal issue before the court then centered on the point “whether the use of the trademark in relation to the goods for export purpose only, not for trade in China be held infringing a trademark in China?”

Following a legal battle in the court of first instance and then in the court of first appeal, the issue came before the Supreme People’s Court of China (SPC) which then held that the OEM goods that are manufactured for the export purpose only to the foreign brand owner, with no intention to trade in China, there could arise no confusion among the relevant consuming public in China about the product source as that of the Plaintiff, thus no infringement of a Trademark in China occurred as such.

Pretul case decision is commented by legal experts as the double edged-sword for trademark owners because it purports that the use of a trademark by the OEM which is identical with a China registered trademark, is not to be constituted as infringement. The legal effect then follows that the foreign brand owners are at risk of their trademark being pirated in the course of OEM manufacturing in China without any remedy since no trademark violation could occur in China in respect of OEM goods according to the theoretical proposition of this judgement as having no customer badge in China of the said foreign brand owner. 

Honda Motor Co. Ltd. v. Chongqing Hengsheng Xintai Trading Co. Ltd. [2019] (Also known as Hondakit case) [3]

Subsequently the Pretul case decision, the SPC in the Hondakit case (2019)  revised its earlier decision stating that real likelihood of confusion exists even if the OEM goods were manufactured for export purposes only to their foreign brand holder and not intended for their sale in China.

The short fact of the case is that the Honda Motor Company since 1988 was using the mark “HONDA” and its some other derivative marks in its various forms, and logos by registering in China for the business in motorcycles. Then, a Burmese company named “Meihua Company Limited” (hereinafter mentioned as “Meihua)” started manufacturing its motorcycles in China engaging an OEM factory labelling the trademark “HONDAKIT”, a trademark registered in Burma. In 2016 the Customs Authority of Kunming at the Yunnan province of China seized a batch of “HONDAKIT” products on the ground of infringement of HONDA mark registered in China. Following it the Honda Motor Company instituted a trademark infringement proceeding against the China OEM Factory of Meihua. The legal battle ultimately reached to the SPC wherein it though retained the base of the earlier PRETUL Case reasoning, revised the test of “real likelihood of confusion” among the China Consuming public, differently interpreted the scope of “real likelihood confusion” holding as below:

  • Firstly, in deciding the confusing effect of disputed mark among China public, the term “public” should be interpreted to include the relevant persons engaged with the export procedure, they are part of China people, thus the complained mark may be treated confusing the China people who came across the mark in the course of their service. 
  • In the second place, in the context of the present development of e-commerce and travel, the public should also encompass “the China people” who come in contact with the relevant goods through online or in their travelling abroad. The OEM goods with the alleged conflicted trademark, although initially may be destined for export to overseas, in the subsequent course they are capable of being circulated back in China. Thus there exists a real likelihood of confusion among the China public who become acknowledged with a China registered mark and then see the use of such a conflicted trademark in the OEM goods. 

The impact of this decision is that, though in the earlier PRETUL case decision there was at least the scope of exporting the OEM goods to the foreign brand holder who intended the production of his goods by employing the OEM factory in China, now after this latest HONDAKIT decision, the said scope became extinguished if someone gets registration of the identical mark in China and complains the infringement.

For the OEM goods, some countries of the world, like India, Australia, UK provide special protective provisions in their trademark law for the foreign investors who have invested for manufacturing their product. But no such special protective measures are given in the law of China [4].

Recent administrative and judicial steps countering the trademark piracy

Amendment to the Trademark Law of China

On the frequent instances of trademark squatting events in China, recently the administrative authority and courts have started different measures to prevent those activities. On 23 April 2019, the Standing Committee of the National People’s Congress passed decision on the amendment of 8 laws including the Trademark Law of China specially focusing measures to prevent bad faith registration of Trademarks [5]. The amended articles to the Trademark Law is said to take effect from 1 November 2019.

Article 4 of the 2019’s amended Trademark Law of China, provides that “an application for registration of a malicious trademark not for the purpose of use shall be rejected.”

The new Law further prohibits trademark agencies from representing clients if the agencies know or should know the trademarks to be filed for registration by such clients fall under the circumstances prescribed in article 4.

Article 7 provides that “when applying for registration and use of trademarks, the principle of good faith shall be observed.” There are several cases in which the China National Intellectual Property Administration (CNIPA) rejected bad faith applications for registration of the trademark. According to a report referring to the statistics of CNIPA published in 2020, in China during 2018-20 there were about 150,000 trademark applications rejected for bad faith filing in the Trademark Office’s examination process [6]. Also there are several judicial decisions in which the court granted order of injunction, compensation, and invalidation against bad faith trademark registration.

Very strong protection is given under article 13 in respect to trademarks which are well known. Article 13 provides that, the holder of a well-known trademark having recognition to the relevant public, may request the protection of it if it is a well-known trademark in accordance with the provisions of this law and if he believes that his rights have been infringed.

Further article 13 contains an exception to  China “first to file” principle in respect of well-known trademark which is unregistered in China holding that where a trademark is applied for registration for the same or similar goods of a well-known trademark unregistered in China which is likely to create confusion, shall not be registered and are prohibited from being used.

Article 13 then gave enhanced protection in respect of well-known trademarks which are registered in China. Where a trademark besides being a well-known mark is also registered in China, it will enjoy protection for goods in the similar classes for which it is registered as well as enjoy protection for goods in cross classes also. Thus if someone applies for registration of a trademark for goods falling in the same or other classes it will not be registered if it is likely to create confusion with a well-known trademark registered in China.

Article 33 of the amended trademark law provides for filing the objection within 3 months of the announcement of preliminary validation in the trademark if it is found by anyone in violation of the provisions above mentioned. In addition, article 44 gives power to the trademark office to declare the registered trademark null and void if at any time subsequent to registration it is discovered the mark is registered with bad motive, or registered by deception or other improper means, and other units or individuals may request the trademark review board to declare the registered trademark invalid.

To refer to the recent judicial step against the bad faith registration of trademarks in China may be referred to a landmark decision by the China Supreme Court given in the Uniqlo Trading Co. Ltd. case (2018)”) [7]. In this case the China Supreme Court rejected the trademark infringement case brought by a trademark squatter itself against the company Uniqlo Trading Co. Ltd. which is a subsidiary of the Japanese UNIQLO-branded clothing retail store which uses the mark UL ULTRA LIGHT DOWN for its products. The China company Zhongwei (Plaintiff) filed 42 trademark infringement actions against Uniqlo in nineteen different courts, which resulted in a number of different decisions. The matter ultimately came up before the China Supreme Court which in rejecting the infringement proceeding brought against Uniqlo, held that the plaintiff Zhongwei abused the legal system in bringing such malicious litigations against Uniqlo. The court quoted the following fact of the Plaintiff to refer to its trademark squatting events that led it filing series of malicious prosecutions against the defendant:

  • Zhongwei filed more than 2,600 trademark applications
  • Zhongwei did not intend to use the marks in commerce
  • Zhongwei’s business model was to sell registered marks at a high price to third parties that genuinely use or intend to use the mark
  • Zhongwei brought 42 litigations against Uniqlo

By this decision, the China Supreme Court took the step to protect the trademarks of companies that have the real intention to register and use the marks in China.    

On 6th January 21, in another case the Wyeth LLC Case 2021 case”, the Hangzhou Intermediate People’s Court ruled on a trademark infringement proceeding filed by the Wyeth LLC (US Wyeth) against a China company the “Guangzhou Wyeth Baby Maternal and Infant Products Co., Ltd. (Guangzhou Wyeth)”. The Court held the mala fide in using the US Wyeth’s registered trademark in China by the Guangzhou Wyeth and awarded injunction against the defendant Guangzhou Wyeth for infringing the China registered trademark of the US Wyeth along with punitive damage 30.55 Million RMB ($4.7 million USD) for conducting unfair trading. The decision then on 26 April 2021 was also upheld by the Zhejiang High Court in the appeal filed by the defendant Guangzhou Wyeth company. The Zhejiang High Court commented that the defendant’s infringement lasted for a long time and made great profits, which met the “intentional” and “serious circumstances” that require punitive damages to be awarded, the Hangzhou Intermediate People’s Court was just in awarding the said punitive damage along with injunction. This trend in judicial decisions against malafide use of trademarks is hopeful to foreign companies investing in China. 

CNIPA’s draft regulation on trademark applications

On 12 February 2019, CNIPA published a draft regulation titled “Some Provisions on Regulating the Application for Registration of Trademarks” inviting public comments before 14 March 2019. The draft regulation was intended to provide stringent provisions to combat the bad faith trademark registrations. In article 3 it defined the “abnormal trademark registration” requiring prevention as follows:

  1. Imitating a trademark well known to the relevant public, and taking unfair use of the goodwill of others;
  1. Preemptively applying for the registration of trademarks that have been used by others and have had certain influence, and improperly seizing the goodwill of others;
  1. Preemptively applying for registration of a trademark identical with or similar to a prior right of others although he knows or should have known the existence of others’ prior rights;
  1. Repeatedly applying for trademark registration with clear improper purpose;
  1. Filing a large number of applications for trademark registration in a short time obviously exceeding the reasonable limit;
  1. The application for trademark registration lacks the true intention to use, and the applicant does not have the actual need of obtaining the exclusive right to use the trademark on the concerned goods or services;
  1. Other trademark application registration acts that violate the principle of good faith, infringe upon the lawful rights and interests of others or disrupt the market operation order;
  1. To help others or for trademark agencies to act as agents for applying for registration of trademarks of the types mentioned in Items (1) to (7) of this Article.

Suggested strategy for MNCs to protect its trademark

Checklist for protecting trademark in China

Protection of your trademark in China can be made with the following checklists:

(i)    Have you registered your trademark in China besides registration in your home country or other places where you wish to expand your business?

Did you take custom border protective measures in respect of your trademark to prevent export-import of the counterfeit product with your trademark?

(ii)    Is your trademark in English or in some other language except the Chinese? Have you also provided a Chinese transliteration of it when registering in China?

(iii)   If registered in China, did you take care of keeping records of using your mark in conducting business in China creating a group of China costuming people so as to avoid non use cancellation?

(iv)   Is your business connection in China solely to manufacture the product of your brand engaging OEM factory there? Did you feel not to create any customer base in China for that reason?  What consideration have you paid then to avoid non-use cancellation of your trademark?

(v)    Did you set the plan to prevent dilution of your trademark in the “aftermarket sale market” of the spare parts of your product?

(vi)   Did you set the measure for keeping continuous watch over the bad faith filing by someone for the registration of identical or similar deceptive mark so as to take timely legal steps against such registration?

The following discussion now explained the reason for the said check-list.

Why and how to follow the above checklist in the trademark protection strategy?

In countries like China that provide for registration of trademarks on the “first to file” basis, the foreign investors must plan early to register their trademarks in the country of investment even before establishing a business connection there though it has the registration in the home country. In absence of registering their trademarks, the trademark-squatting syndicates may tend to execute their motive to secure improper gain over the unregistered trademark owner by firstly creating block to the business of a targeted company in China with registering the identical or similar deceptive trademark which is unregistered by the MNCs, and also recording it with the Customs Authority as a measure to prevent cross-border transportation of the goods besides blocking their trade in internal market of China. After successfully doing that the trademark squatters are in a position to establish a costly bargain with the respective MNC.  In China there is no common law right based on “prior use” of the mark and the legal remedy in the form of “passing off” of the goods or services on the claim of prior user of the mark against the infringer.  

Though recently in China, as it is already pointed out above, the administrative and judicial authorities have started taking measures against trademark squatting and bad faith registration, the fact still remains that if an MNC does not register its trademark in China, unless its mark is well known, have the least hope to win against the trademark squatter establishing the bad faith in registering the identical or similar mark of its pre-existing business. To establish the bad faith, the respective MNC must prove the known status of its trademark among the China consuming public showing the advertisement data, sale revenue, and other business promotion of data over that of the claim of the trademark squatter, generally these will not be readily available. The shrewd squatters will execute their trademark squatting plot much before gathering those types of evidence by the MNC in doing their business with its unregistered trademark in China. Further, China being a country following the “first to file” principle in granting and protecting the trademark, precisely it will be reluctant to secure the rights of an unregistered trademark in China on the claim of prior user whatsoever. It will be much less strain-some for the MNCs and less costly than to involve in a litigation with the trademark squatters. In reference to such difficulty to fight against the trademark squatting, some commentators commented that “although the current Trademark Law includes methods to fight bad-faith trademarks, the need to challenge such marks through lengthy and expensive opposition and invalidation proceedings has made brand protection difficult in China, particularly for foreign entities” [8].

On this same token it is advisable, even if the MNC’s trademark is well-known, it should register its trademark in China. It is not only the case in China, but in other countries also which turn into the increasing focus of foreign investment pool for its manufacturing facilities, technology, market opportunity, investment environment, etc. generally some syndicates grow up who live on seeking avenues for unauthorized manipulation of the foreign brand. To combat them foreign investors must take due precautions based on the country to country legal systems and understanding the culture of such syndicates. 

Also it is required that the MNCs when registering its trademark, if its trademark is a “word mark” written in the language other than Chinese, they should provide a Chinese transliteration of the mark when applying for registration before the China Trademark Office because there are huge instances in which the squatters do registration of the brand with its China transliteration bearing the same meaning and thus tend to secure the business gain over the goodwill of another brand. As an instance of this may be seen Michael Jordan vs Qiaodan Sportswear Co. in 2012, and the 8 years legal battle of Michael Jordan that ended in 2020 [9]. For further detail about the use of Chinese transliteration of the trademark may be seen the article by Yan Zhang and Austin Chang (2021) here [10].

How to Seek International Protection of trademarks?

There are two ways for seeking foreign protection of the trademark- (i) filing the trademark registration application in each country where the trademark owner wishes to expand its business; or (ii) file application under the Madrid Protocol System. The first mentioned procedure is costly, time consuming, and requires extra labor. Under the second mentioned Madrid Protocol system, a streamlined procedure for acquiring cross-border protection to one’s trademark is provided by filing a single international trademark application for other intended countries who are signatories to the Madrid Protocol. This system is based on the home registration of a trademark owner. A person first is to obtain the trademark registration within its own country. If it is a signatory country to the Madrid Protocol, the trade mark owner after obtaining the trademark registration in its home country, may within certain times file an international application directly to the WIPO or its home country’s Trademark Office for such submission complying with certain requirements and paying the required fees. It is then forwarded to the WIPO’s International Bureau, it examines the application and if it approves the mark, it is recorded in the international register and published in the “WIPO Gazette of International Marks”. WIPO then notifies the countries about the application in all the countries listed in the application. The relevant countries examine the application under its national law and registry system and confirm whether the trademark registration will be accepted or not. Usually this confirmation process about the registration by each individual country takes twelve to eighteen months. Madrid Protocol though provided the streamlined process of seeking international protection to trademark, one problem is that since this application is based on the home country registration, if the application or registration in the home county is cancelled or denied, then the international registration will also become invalid per se.

Special precaution for trademark in OEM goods

The MNC that invested to produce their goods engaging OEM in China, though their goods are not intended to sell in China, are greatly vulnerable to trademark piracy in the absence of early registration. Since their products are intended for manufacturing and exporting to the brand holder itself, the use of trademarks in relation to OEM goods will not be treated as “the use” for the purpose of trademark protection in China. Thus no actionable claim may accrue against the trademark squatters pirating the MNC’s brand registering the identical or similar deceptive mark in China. It will then be hard to establish the bad faith claim against the squatters in respect of use of their trademarks.

Moreover even if an MNC has got its trademark registered in China, their mark will remain vulnerable for non-use cancellation under the amended Trademark Law of China if not used in China for 3 consecutive years [11]. Moreover, under the Act, such non-use cancellation petition can be filed by any entity or individual with the Chinese Trademark Office. The law does not even require that the claimant should be an “interested person”. The legal impact that follows on it the claimant need not require to justify its any legal interest for bringing such non-use cancellation petition of the trademark. Thus the MNC in investing production of goods of their brand engaging China OEM, also need to do some business with their product in China, and preserve records of advertisement, sale, brand promotion activities, etc. as proof of use of the marks in China to avoid non-use cancellation risk.   

Conclusion

Due to the territorial limitation on the operation of the trademark, the MNCs must consider strategy for brand protection in launching cross-border business operations. The two dominant principles on trademark claim, “the first to file” and “the first to use” basis, caused differing legal schemes country to country. In countries like China, that follow the “first to file principle” trademark registration and claim, the MNC’s trademark except its early registration therewith is at risk of being pirated. The common law trademark right based on “first to use” and the remedy “passing off” for the unregistered prior user against infringement have no application in China. Though it is hopeful that recently the administrative and judicial authority have adopted strong positions against squatting and bad faith trademark registration, as explained above, their efficacy is yet to be proved.  Especially the trademark squatting events in the past along with the already grown up syndicates and culture, are still the tension. Concerns also remain about the method of lengthy and expensive opposition and invalidation proceedings against fighting bad-faith trademark registrations, the non-use cancellation risks of trademarks used in OEM goods manufactured in China. 

References

1.     WTO Analytical Index TRIPS Agreement – Article 51 (Jurisprudence), https://www.wto.org/english/res_e/publications_e/ai17_e/trips_art51_jur.pdf

2.   Focker v Yahuan, (2014), Mintizi No. 38, (widely known as “PRETUL Case Decision”) Robert P. Merges and Seagull Haiyan Song, Transnational Intellectual Property Law: Text and Cases, (Edward Elgar Publishing, 2018)

3.   Honda Motor Co. Ltd. v. Chongqing Hengsheng Xintai Trading Co. Ltd. [2019] [Min Gao Fa Zai No. 138/2019], SPC decision (published on October 14 2019). https://m.iphouse.cn/verdict/show/id/918823.html?code=l2ywa2ptbZOV

4.      For the trademark protection of OEM goods see in India section 56 read with section 34 of the Trade Marks Act, 1956; in Australia section 228 read with section 58A of the Australian Trademarks Act, 1995; in UK section 56 of the Trademarks Act, 1994 provides right to seek injunction to the brand owners qualified as well-known under the Paris Convention for the Protection of Industrial Property 1883 irrespective of whether or not that person carries on business, or has any goodwill, in the United Kingdom.

5.   Ministry of the Justice of the People’s Republic of China, “The Decision of the Standing Committee of the National People’s Congress to Amend Eight Laws”, (adopted at the 10th session of the standing committee of the 13th national people’s congress on April 23, 2019), www.chinalaw.gov.cn/Department/content/2019-04/24/592_233748.html

6.   Xiaoming Liu, Chofn IP Blog, CNIPA released trademark statistics of 2020, http://en.chofn.com/Articles/609e7c3c68969c002fd7c810/CNIPA_released_trademark_statistics_of_2020, and also see Kangxin News, China’s Trademark Registration Examination Reached 8.784 million Pieces in 2020, dated 20.01.2021 http://en.kangxin.com/html/2/215/217/13135.html

7.   Uniqlo Trading Co. Ltd. vs Guangzhou Compass Exhibition Service Co. Ltd. and Zhongwei Enterprise Management & Consultancy Co. Ltd., Decision by the China Supreme Court, (2018) Zui Gao Fa Min Zai No. 396, summary review of the case at the web page: https://www.frosszelnick.com/china-fighting-trademark-trolls/

8.   Library of Congress, USA, “China: Trademark Law Revised, Prohibiting Bad-Faith Trademark Filings”, https://www.loc.gov/item/global-legal-monitor/2019-07-30/china-trademark-law-revised-prohibiting-bad-faith-trademark-filings/ (accessed on 02.11.2021). The article for the quoted comment referred to “Benny Yip & Catherine Zheng, Good News About Bad Faith: China Amends Its Trademark Law, LEXOLOGY (June 21, 2019)”.

9.    For instance of “bad faith registration” of trademark done with China transliteration may be seen the case: (i) The Beijing Jiahe Xingchan Lubricant Co., Ltd. (Jiahe) Vs. Trademark Review and Adjudication Board(TRAB) and Doosan Co., Ltd., Doosan Infineon Co., Ltd.

10. Yan Zhang and Austin Chang , “Protection of Chinese Equivalents of Foreign Trademarks”, Blog: China IP Law Update, 10.13.2021, https://www.chinaiplawupdate.com/2021/10/guest-post-protection-of-chinese-equivalents-of-foreign-trademarks/

11.    For non-use cancellation may be seen article 49, para 2 read with article 44, para 3 of the Trademark Law of China (as amended upto 2019), www.chinalaw.gov.cn/Department/content/2019-06/11/592_236648.html 


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