HFG Case Studies

In a recent case a famous foreign brand operating in China is facing an appeal from TRAB in front of Beijing First Intermediate People Court in a case of opposition. The famous foreign brand have filed an opposition against an application for a trademark identical only covering goods of “wedding dress” using as legal ground several trademark registered in class 25 not explicitly covering “wedding dress”. The great surprise of the in-house lawyer relate to the fact that CTMO did not reject such application despite identical trademarks and high reputation and moreover extend to the fact that once that Beijing Court has accepted the opposition declaring the rejection, TRAB had filed appeal to the Beijing High P. Court. According to classification system and the rules of similarity issued by the Chinese Trademark office and the TRAB, wedding dress is not similar to dresses. Indeed if an applicant file a trademark designating “clothing, hat, ties, and shoes” the trademark will not by default cover the product “wedding dress”. This is not due to a mistake or an irregularity, it is choice of the Chinese law makers intended to regulate more in details the rules determining the similarity between goods. They aim at reducing the discretionarily of CTMO and TRAB officers while leaving more freedom to judge to evaluate if composition, suppliers, clients, channels, etc. might justify a similarity judgment. In China the classes of Nice Classification have been separated into several subclasses. For example class 25 (clothing and accessories) has been divided into 13 subclasses (2501, 2502, 2503 and so on). Each of these subclasses contains some of the goods of class 25 (for example subclass 2506 and 2507 are related to shoes, 2504 is related to raincoats and water proof clothes). When preparing the list of designated goods it is important to have in mind the separation between the subclasses. Indeed to obtain a large protection it is necessary to include in the designation at least on piece of good for each subclass. This way it is often possible to cover the class by covering each subclass. Wedding dress are located in the last subclass (2513) and often not included in trademark registered via Madrid system. In the case mentioned above the regret of the opponent is that the reputation of its brand has not been taken in good consideration from CTMO and TRAB when assessing the similarity among goods “dress” and “wedding dress”.
A few days ago a client called us and said that he wanted to initiate a Customs’ surveillance program in order to stop fake goods being exported from China to the world. The client has obtained protection for its trademark in China via Madrid (which is a valid alternative to Chinese national application). Preparing the checklist of document to be lodged with the Customs we asked if the local certificate of protection was already obtained. He told us yes, and sent the certificate by WIPO in French language. We explained that the WIPO certificate was not the local certificate of protection. Such document is issued by the Chinese trademark Office and it is regarded by Customs and administrative authority in China as the only formal prove of existence of a trademark applied through Madrid system. Obtaining a certificate is easy and inexpensive anyway it take around 3-4 months and when you are in hurry of enforcing your right, you want everything but not wasting three months for obtaining such certificate.
Chinese consumers prefer reading and speaking Chinese. It is sad and hard to believe sometime, but it is true. In one case we have represented a foreign company which has found itself in trouble for not having properly secured and cleared the right on its trademark in Chinese. The case at issue is about an extra-virgin olive oil imported from Europe into China. The European company has entered the Chinese market several years ago acquiring clients in different regions. The problem arose when the Administration for Industry and Commerce made an inspection into a store in Shanghai upon request of distributor from northern part of China. Indeed the distributor was annoyed by the fact that label in Chinese for product sold in Shanghai was bearing its registered trademark instead of the trademark of the brand company or the Shanghai distributor. We were firstly surprised that the label was reproducing the trademark of the distributor; usually it is only the company name of the local distributor which is placed on the label and not the trademark. When we saw the label (and we make reference to label in Chinese, the one on the back of the products with indication of ingredients and other mandatory info), we understood that the trademark in Chinese owned by distributor was one of the possible translation of the trademark of foreign company. The distributors in the lack of action for registration of the trademark in Chinese, have secured three different Chinese trademarks for that product. One of these distributors was using the translation (one of the possible translation) for all its collection of products. In two months AIC issued three fines in three different stores for trademark violation. We have helped the client in invalidating the mark, negotiating with AIC and with the (former) distributor. Anyway, the most easy thing –ESPECIALLY for food and drink products – is registered both Latin and Chinese characters trademarks immediately. Don’t let your distributor deal with the trade mark registration. Pay attention to information reproduced on the label.