Category: Counterfeiting

Podcast 1: How to Register Trademarks in China; and Battling Trademark Piracy

How to Register Trademarks in China

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[Update: 2020] Recent changes in Chinese trademark law require applicants to have an “intent to use” the applied-for mark, which provides brand owners with another option for enforcing their rights in China. 

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Unlike the United States, which is a “first to use” trademark system, many countries, including China, follow a “first to file” trademark system.  Meaning whoever files a Chinese trademark application first for a particular trademark and goods/services, which ultimately matures into a trademark registration, is considered the legal owner of the registered mark – even if that party had never used the mark in China (or elsewhere).  In most cases, unless your trademark is considered “famous” (and I mean “really really famous“), if someone files a Chinese trademark application for your mark and products first, you lose.     

How to Register Trademarks in ChinaMany cases of third parties registering a company’s trademark in China are the result of trademark pirates; those parties seeking to hold the trademarks of others for ransom.  Even worse, these pirates may even sue the rightful trademark owner and user for trademark infringement in China and seek millions of dollars in damages – simply because they filed a trademark application first.     

Not only do these pirates register the trademarks of others in English but they also register them in Chinese characters, since most people in China do not speak English.  For that reason, it is best practice to register brand names in China in both English and Chinese.  Failure to register trademarks in China can result in loss of rights, loss of market opportunity and/or many years of costly litigation (sometime 4-6+ years) over trademark rights. 

Even if brand owners do not sell their products in China, they should still secure Chinese trademark registrations for their marks if they manufacture products in China for export.  Under Chinese law, trademark pirates may record their registered marks with the Chinese customs authorities in an effort to seize your products at the border.  Once seized, the pirates request ransom in exchange for the release of your products. 

Trademark theft and piracy is an industry in China, as well as some other counties.  Not only should companies consider registering their trademarks in those countries in which they do business and/or conduct manufacturing, they should also reserve certain country domain names that correspond to those trademarks to keep them out the hands of Internet pirates (a/k/a domain name squatters).  

How Can We Help Brand Owners with the Chinese – China Trademark Registration Process? 

  1. Audit your current global trademark portfolio for gaps in trademark protection
  2. Provide a list of “first to file” countries for review
  3. Provide guidance with respect to goods and services coverage
  4. For non-English speaking countries, such as China, provide Chinese versions of your trademarks (provided by English and Chinese speaking trademark specialists)
  5. Review your marks for any negative connotations in non-English speaking countries
  6. File global trademark applications to protect marks vulnerable to trademark piracy

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Bill Introduced to Combat Copyright Infringement and Counterfeiting in United States: A Necessary Weapon to Combat Counterfeit Epidemic

On September 20, 2010, it was announced that Senate Judiciary Committee Chairman Patrick Leahy (D-VT) and senior Republican member Orrin Hatch (R-Utah) would introduce the Combating Online Infringement and Counterfeits Act.  This Act would give the U.S. Department of Justice the power to shut down websites and disable domain names that are primarily designed to offer goods or services that are in violation of copyright and/or counterfeit laws, including offering of infringing goods or services themselves, offering access to such goods or services or providing a web site whereon users are directed to infringing goods and services via links.

Under the Act, as currently drafted, courts may issue a temporary restraining order, a preliminary injunction or an injunction against the domain name used by an Internet site dedicated to certain infringing activities. The Attorney General may commence an In Rem action against any domain name subject to the Act. For domain name registrars and registries located in the United States, a domain name will be deemed to have its situs in the judicial district in which (1) the domain name registry or registrar is located, or if there are multiple locations, where the registry operations are performed or (2) documents sufficient to establish control and authority regarding the disposition of the registration and use of the domain name are deposited with the court. If the situs of a domain name is in a foreign jurisdiction, the AG may still bring an action to prevent the importation of infringing goods and services into the United States.

The purpose of this Act is, of course, to reduce the flow of copyright infringing and counterfeit products into U.S. commerce, which may also protect U.S. consumers from infringing and unsafe products, job loss and protect company profits. Sheldon Whitehouse (D-RI) said that “The online sale of stolen intellectual property – whether pirated movies or music or counterfeit electronic goods or pharmaceuticals – hurts American companies, kills American jobs, and puts consumers at risk for defective products.”

This Act is a necessary weapon to combat a counterfeit epidemic that has hit the U.S. shores. To read more about our counterfeit epidemic, you can read my post.

If this Act is enacted, could it be misused to take down legitimate sites owned by Domainers? Unlikley.  However, wouldn’t this Act include Domainer sites used primarily for linking to other sites selling infringing and/or counterfeit goods? Absolutely.