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IPR Protection in China for European SMEs

IPR Protection in China for European SMEs. Presentation by Philippe GIRARD-FOLEY Of Counsel WAN HUI DA Intellectual Property Agency and Law Firm. Case Demonstration Trademark Prosecution. Trademark Prosecution. Acquisition of Rights Protection of Rights Well-known Trademarks.

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IPR Protection in China for European SMEs

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  1. IPR Protection in China for European SMEs Presentation by Philippe GIRARD-FOLEY Of Counsel WAN HUI DA Intellectual Property Agency and Law Firm

  2. Case Demonstration Trademark Prosecution

  3. Trademark Prosecution Acquisition of Rights Protection of Rights Well-known Trademarks CTO-Application TRAB- Review of Refusal Court Non-useCancellation CTO Opposition Review of Cancellation TRAB Review of Opposition Dispute Court

  4. Acquisition of Rights TRAB- Review of Refusal • Successful registration of Duracell’s “Copper and black colors” of battery as Color Combination Trademark • This is the first color combination trademark registration in China.

  5. Acquisition of Rights CTO & TRAB & Court • Registration of Three-Dimension Trademark • First three-dimension trademark registration via domestic application approved by the Court.

  6. Acquisition of Rights CTO- Application for Registration This is the first application in which exhibition priority is claimed and recognized in China.

  7. Acquisition of Rights • Can “three-stripes” on clothes, trousers and shoes be registered as trademark? • The trademarks’ distinctiveness has been established with the TRAB on the basis of use TRAB- Review of Refusal

  8. Protection of Rights CTO & TRAB - Cancellation • Based on the grounds that “PDA was the abbreviation of Personal Digital Assistant and the generic name of products”, filed request with CTO and finally had this registration revoked. • This revocation saved the PDA industry in China. Offending mark

  9. Protection of Rights TRAB & Courts of 2 instances • Is this name a generic name for grape and also generally used in Chinese wine industry? • The mark had been registered in early2002. After that, four Chinese famous wine producers filed cancellation based on the grounds that this name was not distinctive. • After the TRAB’s decision and 2 instances of court procedure, this trademark was finally judged to be registrable. This case has great impact on Chinese wine industry since this name has accumulated much value up to now. 解百纳（Jie Bai Na in Chinese）

  10. Protection of Rights TRAB, Courts & local AICs – Integrated measures of administrative lawsuit & civil lawsuit & raid actions VS. trademark on signboard together with “Crocodile Franchise Boutique” LACOSTE’s trademark trademark registration trademark used on clothing After getting registration, the offender modified the registered trademark in actual use and highlighted the company name “Crocodile in Chinese”. Although the trademark registered seemed to be an “electric eel”, the actually used mark expressed itself as “crocodile”. By conducting cancellation of the offender’s trademark, civil litigations in two cities, and raids of over 20 boutiques around China, the legitimate trademark owner won its case against the infringer.

  11. Protection of Rights • While filing opposition, successfully conducted a series of raid action to stop the other party’s sale of products with the opposed trademark. The raid action were supplemented as evidence to support the opposition. • With such integrated measures, the legitimate trademark owner won the opposition and timely stopped the offender’s use of the trademark. CTO & local AICs - Opposition & raid action VS Offending mark

  12. Recognition of Well-Known Trademarks • Recognition of well-known status of “吉列/Gillette” • By administrative enforcement channel, one of the two foreign marks recognized in the first batch after the execution of Rules on the Recognition and Protection of Well-known Trademarks • Recognition of well-known status of “米其林”、“MICHELIN” and “Bibendum Device” • By trademark opposition channel • Recognition of well-known status of “欧莱雅L’OREAL” • By trademark opposition channel • Recognition of well-known status of “Crocodile Device” • By judicial judgment channel • Recognition of well-known status of “柯达” / Recognition of well-known status of “KODAK” • By administration enforcement channel / By judicial judgment channel • Recognition of well-known status of “美宝莲MAYBELLINE” • By administration enforcement channel • Recognition of well-known status of “高仪Grohe” • By trademark opposition channel • Recognition of well-known status of “依视路” • By trademark review on opposition channel

  13. Recognition of Well-Known Trademarks • How to protect an unregistered trademark and stop other’s use? • “酸酸乳”（Suan Suan Ru）was the first unregistered trademark recognized as well-known by Chinese Court. Court VS

  14. Thank you for your attention

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