Lafite succeeds in cancelling ‘Lafeite’ used on hotel services

A Chinese hotel named Beijing Lafeite Castle Hotel Co., Ltd. (Lafeite Hotel) in 2007 filed for the registration of the mark “拉斐特” (pronounced as “Lafeite” in Mandarin) for use on restaurant and hotel related services under Class 43, which the China Trademark Office (CTMO) approved for registration in 2015.

Château Lafite Rothschild (Rothschild), the producer of the globally famous wine brand “LAFITE” (“拉菲” in Chinese, pronounced as “Lafei” in Mandarin), filed for the cancellation of the disputed mark before the Trademark Review and Adjudication Board (TRAB) claiming that, as its prior registered trademarks “LAFITE” and “拉菲” (“Lafei”) designated for use on wine products have attained well-known status, the disputed mark “拉斐特” (“Lafeite”), which is similar to the mark “拉菲” (“Lafei”), may damage Rothschild’s interests.

[Note: according to Article 13 of the Trademark Law, well-known trademarks that are registered in China are entitled to cross-class protection to the extent that no mark that is a copy, imitation or translation of said well-known mark may be registered for use in whatever class of goods, if doing so may mislead the public or otherwise damage the interest of the registrant of the well-known mark.]

The TRAB however handed an unfavorable decision holding that the evidence adduced is insufficient to prove that Rothschild’s trademarks “LAFITE” and “拉菲” (“Lafei”) had attained well-known status in China prior to the registration of the trademark; meanwhile, since the restaurant services under Class 43 and the wine products are dissimilar, the disputed mark, as applied for use on restaurant related services, is unlikely to damage Rothschild’s interests. Continue reading “Lafite succeeds in cancelling ‘Lafeite’ used on hotel services” »

Trade Marks in China: Q&A for the International Comparative Legal Guide to Trade Marks 2017

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For any EU SME operating in China, Trade Marks will be an important IP asset to have. So in order to meet any questions you might have, our China IPR SME Helpdesk expert Mr. Charles Feng from East & Concord Partners based in Beijing has kindly drafted for us a very useful and informative blog post on Trade Mark Protection in China. In this comprehensive Trade Mark guide, our Q&A with Mr. Feng will give you all the answers you need on Trade Mark protection in China. 

1          Relevant Authorities and Legislation

1.1       What is the relevant trade mark authority in your jurisdiction?

The Trademark Office (“TMO”), which is affiliated with the State Administration for Industry and Commerce, is the authorised government agency in charge of trademark administration including examinations of trademark applications, oppositions as well as the cancellation of trademark registrations for three years of non-use.  The Trademark Review and Adjudication Board (“TRAB”) oversees the examination of various applications for appeals against the TMO’s decisions, as well as trademark invalidation matters.

In addition, local Administrations for Industry and Commerce (“AICs”) or Market Supervision Administrations (“MSAs”) are in charge of the administrative enforcement of trademark rights.

People’s Courts have jurisdiction over trials for trademark-related administrative or civil litigation.

1.2       What is the relevant trade mark legislation in your jurisdiction?

The most fundamental legislations include the Trademark Law of the People’s Republic of China (“PRC Trademark Law”), the Implementing Regulations of the PRC Trademark Law as well as multiple Judicial Interpretations related to trademark law which are issued by the Supreme People’s Court.

In addition, the Anti-Unfair Competition Law of PRC provides protection to unregistered marks such as distinctive names, packaging or decoration of famous goods.  The criminal code provides protection against counterfeiting activities where the illegal turnover exceeds a certain amount.

Continue reading “Trade Marks in China: Q&A for the International Comparative Legal Guide to Trade Marks 2017” »

Proposed Revisions to the Chinese Patent Law (December 2015)

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PatentToday’s blog post has been kindly brought to you by our IPR expert Mr. Toby Mak from Tee & Howe Intellectual Property Attorneys. In his article, which was first published in UK Chartered Institute of Patent Attorneys (CIPA) Journal,  Mr. Mak gives a detailed overview of the Chinese State Intellectual Property Office’s final draft of the proposed revisions to the Chinese Patent Law. 

In December 2015, the Chinese SIPO published their final draft of the proposed revisions (the proposal) to the Chinese Patent Law (the Law) to seek public opinion. Compare to the draft in April 2015 (please see my report in the May issue of the CIPA Journal), there are a lot of significant changes in this proposal, while many changes proposed in April 2015 were retained. This article reports these proposed revisions in the final draft, together with my comments.

As this article closely relates to mine published in May 2015 issue of the CIPA Journal, I will continue to use the same number scheme for various topics so that the two articles could be referred to each other.

To start with, let us have a look at the changes that have been retained and remain unchanged: Continue reading “Proposed Revisions to the Chinese Patent Law (December 2015)” »

Bad Faith Trade Mark Registrations in China

Prior trade mark registrations, also called ‘bad-faith registrations’, are a significant problem that many European companies encounter in China. This process commonly involves a Chinese company first registering the trade mark of a foreign company in China with the express intention of selling it back to the foreign company at an inflated price. Finding out that a Chinese company has registered a bad faith trade mark is one of the biggest complaints of European Small and Medium Enterprises (SMEs) trying to enter the Chinese market. These prior registrations can limit the foreign company’s freedom to operate by restricting its ability to enter the China market or even to source goods from China.

As an example, a Scandinavian SME used a Chinese factory to make its goods for export. The Chinese supplier registered the Scandinavian company’s trade mark in China and engaged China’s customs to intercept export goods bearing the trade mark, thereby disrupting the Scandinavian company’s business. Continue reading “Bad Faith Trade Mark Registrations in China” »

Back to the Basics Series: Protecting Trade Secrets in China Part II

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ConfidentialLast week we explored Chinese laws on trade secrets and discussed some measures that the SMEs can take to protect their trade secrets. This week we get more practical and discuss how the SMEs can use non-disclosure agreements and confidentiality agreements to protect their trade secrets. We will also take a look at the measures the SMEs can take, once the trade secrets have been illegally revealed.

Nearly all businesses in all industries and sectors possess trade secrets. Trade secrets are a valuable and highly useful form of intellectual property right (IPR). As the name suggests however, trade secrets are a non-registrable form of intellectual property; they only enjoy legal protection as long as they are not disclosed publically. It is therefore crucial to prevent your trade secrets from being divulged in the first place. Once out, there is usually very little you can do about it. This concluding piece of a two-part article describes measures you can take to help ensure trade secrets aren’t lost through employees and third parties as well as options available to you should your secrets be disclosed. Check the last issue of Eurobiz for part I of this series which outlined how to identify a trade secret and the physical, technical and contractual barriers you can put in place to protect them.  Continue reading “Back to the Basics Series: Protecting Trade Secrets in China Part II” »