ANTI-COUNTERFEITING
“Tis necessarily involves both people on the ground in the areas that exhibit the most egregious counterfeiting activity and partnering with trusted counsel and independent investigators. Ultimately, it is necessary to get a good picture of what the counterfeiting marketplaces look like in strategically chosen areas.”
Ticking the boxes
Filing trademark rights is an obvious but necessary action to aid anti-counterfeiting efforts in China. Aimin Huo, deputy director of the legal division at CCPIT Patent and Trademark Law Office, says that brand owners need to offensively file and obtain trademark rights in China so that they can build adequate trademark portfolios.
“China follows the first-to-file principle and, as a general principle, only registered trademarks are protected,” says Huo. “Protection for well-known trademarks that are not registered can be an exception, but it can be very difficult to [signify] an unregistered trademark as well known [to] the Chinese authorities.”
Brand owners also need to be aware of experienced trademark infringers that obtain
trademarks in bad faith. “If they have obtained the trademark rights, the legitimate trademark owners have not only lost the legal basis to protect their trademarks in China but have become the trademark infringer instead,” says Huo.
Abrams says that not registering and not using a mark can be detrimental to big brands. “Most big brands are looking at China as an extremely important emerging market—especially for luxury goods. Large, well known brands that have not entered the market already have reason to be very nervous, because third parties may already be using and infringing their marks,” she says.
She also says that it is “very difficult to oppose once a third party has commenced use and been afforded registration...You must wait three years post-registration to challenge that particular mark on the basis of non-use,” she explains.
Word marks are popular in China and brand owners make sure that they register English- language word marks as a priority. But Chinese-language words mark may be of even greater importance to protecting a brand in China. “You have to have a Chinese-language trademark or the market has to make one up for
it,” says Woods. “Tat’s oſten less than flattering to the product or the company, and the brand owner loses control of that because it’s effectively in the public domain.”
In China, Tiffany’s trademark portfolio is mainly made up of word marks, including the English versions of the primary Tiffany names. Te company also has marks in Chinese characters. “We have both English-language trademark registrations in China as well as registrations for the equivalent transliterations into Chinese characters,” says Abrams.
She explains: “Tere is no direct, natural translation of the primary Tiffany mark into Chinese. Te Chinese character marks are ultimately the most phonetically similar marks to the English version. If a brand has a name that has no direct, natural translation into Chinese, it generally chooses a common transliteration to adopt consistently. Te difficulty with transliterations is that there are oſten variations or similar versions of such phonetic equivalents. In our case, we encounter ‘Difani’. Tis is phonetically similar to Tiffany in Chinese characters, and we have opposed many applications comprised of similar phonetic elements.”
www.worldipreview.com
World Intellectual Property Review May/June 2011
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