Posted on : 2023-10-22 21:20:35
Article : Good Morning Management Solution for TASK 264 –To be on safer side of the IP, be on top of trademark registrations in China, and make sure the registration of the trademark is conducted in your own company name
Further to our Good evening Friday task 264 part of discussion, here in this solution part we discuss on the results of the referred infringement cases and action taken on the errant acts by the third parties.
Action taken on Dutch additives making SME case- The trademark registration carried out by the former general manager was done in bad-faith due to his existing relationship with the Dutch SME. The Dutch SME thus filed for a trademark cancellation as the trademark was registered in bad faith, and then subsequently applied for the trademark itself.
After having filed the trademark cancellation, which temporarily stopped infringement of the Roi Jaguar trademark, the Dutch SME continued to produce the product, but under a different product name. Before the new product name was used, the company checked that there were no conflicting trademarks that had already been registered in China, with regard to additives for that new name. The Dutch SME then registered the wordmark, logo and the Chinese character name of the new product. Once the cancellation was concluded and the trademark was applied for in the Dutch SME’s name, the Dutch SME was able to put its products under the Roi Jaguar name back on the market.
Action taken in case of Spanish SME maker of surgical instruments- The flyers and photos of the products obtained by the Spanish company were not recognised as evidence under Chinese law. In China, potential evidence must be notarised by a Chinese notary public before it is recognised as official evidence. Therefore, the Spanish company hired a law firm and a Chinese notary public to facilitate this process.
The company first employed a patent attorney to make correct assessments on whether infringement actually occurred and on the patent portfolio of the Chinese company. This was necessary because Chinese companies often use defensive patents against foreign companies to scare them away from the Chinese market and from going through the financial burden of a patent infringement case. If it were to go to a defensive patent case, the Chinese company would claim the original patents of the Spanish SME to be invalid and that the SME is therefore infringing upon the patents of the Chinese company, which are often utility model patents. After conducting a patent search, it was revealed that the Chinese company indeed owns many utility models patents.
The Spanish company’s patent attorney now needs to carry out a patent assessment with regards to the infringement case after the notarised evidence is obtained. After obtaining the evidence, the Spanish company then has three options. The first would be to negotiate with the Chinese company to stop the infringement. The second would be to take administrative action through the local Intellectual Property Office where the infringer is located in order to raid the premises and confiscate and destroy the infringing goods and to penalise the company. The Spanish SME also has a third option of starting a court action against the Chinese company in order to obtain a long-term solution to the infringement.
End point- To protect the IP rights the foreign companies try to be on top of trademark registrations in China, and make sure the registration of the trademark is conducted in your own company name. Draft your contracts with care and with the assistance of legal professionals and translators to make sure that all terms, conditions and obligations are clear for both parties and learn to make sure that evidence is notarised in China by a Chinese notary public. Assess a competitor’s patent portfolio before taking action. Assess whether or not a Chinese patent is infringed before you start any enforcement against a Chinese infringer.
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