Introduction

Personal data is getting increased attention globally. China has enacted a new law to regulate the collection, storage, and use of personal data. It comes as China has turned its attention to technology, Internet and other areas of business where personal data is collected. China is not alone in this: there is increased attention being paid to personal data in many jurisdictions, including, most recently, the US where reports indicate that the FTC is considering strengthening privacy rules. (Alternative link)

Internet related business has probably made greater strides in China than just about anywhere. On-line purchases are the first choice for the aspiring middle class and young people. Almost anything can be delivered to your door. Any city is alive with delivery vehicles of one sort or another. This activity has brought with it many different forms of payment, primarily by phone Apps.

Concurrently, of course, this unification of personal, commercial, and financial data has fuelled a huge trade in and based on personal data collected by whatever available means.

This is the context for the new law. China has decided that this trade based on personal data, Internet based or not, must be regulated.

The Personal Data Protection Law

The Standing Committee of China’s National People’s Congress adopted the Personal Information Protection Law (“Law”) on August 20, 2021, with effect from November 1, 2021. It is a substantial piece of legislation with 74 Articles set out in 8 Chapters. Previously there were only guidelines and regulations governing collected personal data. The Law formalises and unifies the approach to these issues. The Law lacks detail in some of its provisions and the implementing regulations are expected to be put in place to provide this.

Application of the Law

The Law applies to:

  1. any activities in China processing the personal data of an individual; and
  2. any activities outside China processing the personal data of an individual in China where the activities are for:
  • providing products or services to an individual;
  • analysis or evaluation of the behaviour of an individual; or
  • meeting other circumstances provided by law.

Processing” includes activities to collect, store, use, process, transmit, provide, disclose, or delete personal data.

Personal data as defined in the Law only refers to data that can be used to identify a person. Anonymized personal data is expressly excluded from the scope of the Law.

Processing Requirements

Personal data must be processed:

  • lawfully and in good faith, securely to prevent any unauthorized access to, leakage of, or tampering with, or loss;
  • for a specific and reasonable purpose and only to the necessary extent;
  • according to publicized rules in an open and transparent way; and
  • properly to ensure that the personal data is accurate and complete for the purpose.

Consent

Except for specific circumstances provided by law – necessary for the conclusion or performance of contract where the individual is a party; fulfilling a statutory responsibility; responding to a public health emergency; etc; personal consent is required for processing an individual’s personal data.

Consent should be voluntary, explicit, and on a fully informed basis. The individual may withdraw consent at any time, but only with prospective effect.

Consent from parents or legal guardian is necessary for individuals under the age of 14 for any of their personal data.

Major Obligations of the Data Processor (“Processor”)

Except as provided by law, or in an emergency, the Processor is required to inform an individual, truthfully, accurately and completely using clear and easily understandable language of the:

  • name and contact details of the Processor;
  • purpose and methods of processing personal data, type of personal data to be processed and how long the data will be kept;
  • rights of the individual whose data is collected and how to exercise them; and
  • other matters to be informed as required by law.

Personal Data Protection Officer

The Processor must designate a personal data protection officer (“Protection Officer”) once the personal data it collects has reached a threshold amount. This is not defined by the Law and is likely to be clarified by the implementing regulations or by the National Cyberspace Authority (“NCA”).

The Protection Officer is responsible for supervising the processing of personal data and the actions taken by the Processor to safely protect it.

If a Processor is located outside China, it should either establish a specific body in China or designate a representative there. It is required to submit the name of the body or the name of the representative and their contact details to the NCA.

The Law is silent on appointing an individual to this role. Directly employing a Chinese individual from offshore can be risky for the offshore employer.

Evaluate the Impact on Personal Data Protection

Before proceeding with the following activities, the Processor is required to evaluate their impact on personal data protection:

  • processing sensitive personal data such as biometric recognition, religious belief, specific identity, medical and health, financial account, personal location tracking and other data of an individual;
  • use of personal data in automated decision making;
  • engaging a third party to process the personal data on its behalf or providing personal data to other Processors, or disclosing personal data;
  • transmitting personal data to offshore; or
  • other activities provided by law.

Additional Obligations for Major Processors

Processors that provide important Internet platform services, have a huge user base or operate a complex type of business (none defined yet), have the following obligations to:

  • establish a sound personal data protection and compliance system;
  • formulate and set out the policies to be followed;
  • set up an independent body composed mainly of external members to supervise their protection of personal data;
  • develop platform rules in accordance with the principles of transparency, fairness and impartiality;
  • these rules should specify the standards for processing personal data and the obligations to protect personal data to be met by the product or service providers operating on their platform;
  • stop providing service to product or service providers operating on their platforms which seriously breach the laws or regulations for the processing of personal data; and
  • publish social responsibility reports on protection of personal data regularly and accept public scrutiny.

Processors’ Shared Responsibility

If two or more Processors share the processing of personal data, they are jointly and severally liable to the individual. Using a subcontract Processor does not relieve the primary contractor of liability.

The Processor is required to regularly audit its operations to ensure compliance with its legal obligations.

Sensitive Personal Data

If the personal data to be processed includes sensitive data such as biometrics, religion, specific identity, medical and health, financial accounts, personal location tracking and the like, the Processor will be subject to stricter rules. Specific consent is required, and very strict protective measures should be in place to protect this data.

Transfer of Personal Data Offshore

A Processor may only transmit personal data offshore as required and necessary, with specific and informed consent from the relevant individual. Data to be provided when obtaining consent includes the name and contacts of the offshore recipient; the purpose and method of processing; the type of data to be processed and transferred; and how an individual can exercise their rights against the offshore recipient, including the procedure for this.

Offshore transfer requires that the Processor meets one or more of the following:

  • pass the cyber security evaluation organised by the NCA;
  • be certified by a professional institution designated by the NCA;
  • have a contract with the offshore recipient to specify their rights and obligations using the standard contract provided by the NCA; and
  • meet other requirements set out by law.

The China Processor sending personal data offshore is responsible for the offshore Processor complying with China’s legal requirements. These include the Chinese security assessments set out in the Law. If these are not met, the personal data must remain on servers located in China.

Individual Rights

As detailed in the Law and subject to its limitations, an individual has a right to:

  • know about and control the use and processing of of their personal data;
  • access and take copies of personal data held;
  • transfer data held to another Processor;
  • correct and complete personal data; and
  • have their personal data deleted once the purpose for which it was provided has been completed. 

Consequences of Breach

The Processor may face both administrative penalties and civil liabilities for breach of their obligations. Administrative penalties could be up to RMB 1 million (Approx USD 155,000); or for serious cases, RMB 50 million (USD 7,752,000) or 5% of the total revenue of the previous year. Further, the individuals whose rights and interests were damaged can seek remedies against the Processor.

The Protection Officer or any other individual directly liable for the breach could face personal liability. Personal liabilities include penalties between RMB 10,000 (Approx USD 1,550) to RMB 100,000 (Approx USD 15,500). Penalties in serious cases go up to RMB 1 million (Approx USD 155,000) or being banned from taking the position as director, supervisor or other senior management or Protection Officer for a period.

Who can take action?

A wide range of aggrieved persons and entities are empowered to take action for misuse of personal data and other breaches of the Law.

Commentary

This article attempts to summarize the key provisions of a substantial piece of legislation. As such it cannot be a substitute for reading and understanding the Law in its complete form.

The Law, as is common with many Chinese laws, is short on the detail required to actually comply with it. Implementing regulations usually provide the essential details and guide administrative bodies on applying the law. In the absence of this supplementary guidance it is difficult for any business to know exactly what they must do to comply with it.

For example, personal data necessary for the conclusion or performance of a contract is an exception for consent, but personal financial data is sensitive personal data, requiring special handling. Which applies to credit card details supplied for a purchase? Is the test necessity?

The Law requires substantial changes in how personal data is collected and processed, imposing obligations that did not really exist before. Businesses will have to develop wholly new methods to comply. Many of the requirements will need software changes, or new software to be effectively implemented. Software takes time to be written and tested, but it is the only practical means to monitor the processing of personal data held in digital form.

The Law imposes very onerous burdens for personal data acquired by businesses located outside China or sent offshore from China for “processing”.

Foreign companies whose business is large enough will need to consider carefully the obligations imposed by the Law. Among them the need to appoint a Protection Officer and ensure their systems are audited. If the data collected meets the threshold, they must also pass the security assessments set out in the Law or store it on servers within China.

Smaller businesses too cannot ignore the provisions of the Law.

Take-aways

  • The Law is comprehensive, but in its present form lacks detail in some key areas. Despite this, prudence suggests that planning for the obligations imposed by it should commence immediately.
  • The obligations imposed upon cross-border transactions are particularly onerous. Dealing with these and the associated costs will have to be managed carefully.
  • Many of the obligations imposed by the Law will require a technical response via software that may not yet exist. The personal data governed by the Law exists in a digital form and can only be monitored and dealt with digitally.
  • Despite any difficulties, there is an obligation to comply. Those that gather and process personal data in or from China need to be preemptive rather than reactionary.

Graham BROWN & PENG Wei

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Copyright a trademark?

Copyright can be a valuable adjunct and enhancement to China trademark protection. Copyright does not automatically apply to all trademarks. Word marks, for example lack the essential creative and original aspect that is needed to be a “work” as defined in China’s Copyright Law.

A logo (device in TM speak, but logo here) may satisfy the requirements. Fine art is not needed, just a work with original creative input. When this is satisfied, the logo may be protected as a “device” product or service mark and also by copyright.

Why would you want both? A real world example. We alerted our client, a global supplier of alcoholic beverages, that a Chinese company had applied to register its logo as a trademark for children’s toys. Although trademarked in all relevant classes, our client had no legitimate interest to cover that category with its trademark applications. We successfully opposed the Chinese company’s application on the basis of copyright infringement.

The legal grounds are in the Trademark Law – registration of a trademark shall not infringe the prior rights of others, and that includes prior copyright.

Copyright in China

China is a signatory to the Berne Convention and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). In general, copyright in China operates very similarly to other places.

Copyright in a work comes into existence when it is created. It is very important to note this because it has “first to file” implications.

If a logo meets the criteria to be a “work” according to China’s Copyright Law, copyright in that work came into existence at its creation. That is almost certainly before anyone successfully registered, or applied to register it, as a trademark in China! This is very important for China – a “first to file” jurisdiction.

If an application is made to register an identical logo as a trademark, it is relatively easy to apply copyright in opposition. (Assuming that you can establish that it is a “work”). Similarity is more difficult to deal with and the evidentiary burden greater, but it is also a viable option to consider and act on.

Copyright ownership

Copyright ownership must be proved in an infringement case. A logo as a “work” is not enough. Proving that you own the copyright can be more problematical than establishing a work. If you are the artist or creator of the logo, that makes life simple, but in the corporate world that is rarely the case. More usually an outside agency or studio has been engaged to provide the logo as part of the overall branding. It is important that the copyright interest is formally transferred to the brand owner.

It is now quite common for a brand owner to also register a Chinese language version of a logo as a trademark. If the only Chinese input is to add Chinese characters to an existing logo that is probably not enough to make it a work. If it is effectively a separate work then it is likely that copyright will belong to the creator. The contract for this is very important and should formally transfer copyright to the brand owner.

A Chinese court will typically want to see documents recording the formal transfer of the copyright in the work to the claimant. Unfortunately, in many cases this formal step has been omitted or the documents have been lost. China’s Copyright Law allows for works created during employment or under a contract, but the burden of proof is on the claimant. In China, these arrangements are most commonly reduced to writing and that is what a Chinese court expects to see. Attention to detail in this aspect of copyright enforcement is very important.

Copyright registration

Copyright registration is available in China, but is not a requirement for action against an infringer.

Registration, however, is accepted as prima facie evidence of the existence and ownership of copyright in a work. The registration process itself needs to be carefully done, but it can avoid the need to translate a lot of secondary material to be put before a Chinese court to commence an infringement action.

We generally recommend registration of copyright in China and this can be very important for trademark protection.

Copyright registration is also a requirement to record copyright with China Customs. Recordal (as it is known in China) allows China Customs to stop apparently infringing inbound or outbound goods at the border.

Recordal is not just for copyright. It extends to all China IP rights, including trademark. A China Trademark Registration Certificate is needed fot recordal and some brand owners will need to take additional steps before they can do this.

Benefits of Copyright in brand protection

  1. China has 45 classes for trademark registration and protection. If you register a trademark in relevant classes in China, you will be only able to stop others from registering or using the same or a similar trademark on goods or services in those classes. This is not China specific and is the usual situation with trademarks.
  2. Copyright can protect across all classes if the trademark meets the China copyright requirements for a work.
  3. Allegations of trademark infringement are commonly made against Internet sales portals. In our experience copyright can give you protection in circumstances where trademark infringement may be difficult to readily establish.

Take-aways

  • Copyright can be a valuable adjunct to trademark registration in China.
  • Not every trademark can be subject to copyright protection – it must be a work as provided in China’s Copyright Law.
  • Proving copyright ownership of a work is essential for a copyright action against an infringer.
  • Registration of copyright is not essential but has very real practical advantages.
  • As always, it is much less expensive to protect rights than it is to try to recover them from someone else.
  • Copyright is not a “one size fits all” solution. Seek advice on your specific situation before acting.

WEI Xin & PENG Wei

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AWS? Not for Amazon in China

Introduction

AWS is Amazon’s brand for its dominant cloud services. A series of administrative and court decisions have confirmed that a Chinese company has the legal rights to the “AWS” trademark in China.

China is a “first to file” trademark jurisdiction. Use or intended use is not part of registration. This is very different from many other jurisdictions and not paying attention to this has cost many companies the loss of the right to use their “outside” brand in China.

Chinese company Yanhuang Yingdong Technology and Development Co Ltd (“Yanhuang Yingdong”) owns several China trademarks. Between February 7, 2008 and April 14, 2012 it registered “AWS” as its trademark in computer and technology related categories in classes 42 (TM 4249189), 9 (TM 8967031) , and 35 (TM 8967030 ).

An Amazon affiliate, Amazon AWS Technology Services (Beijing) Co Ltd (“Amazon Beijing”) together with Beijing Guanghuan Xinwang Technology Company Limited (“Guanghuan Xinwang”) provide cloud computing services in China, using “AWS” branding. Despite trying, they were not successful in getting a China trademark for “AWS”. They continued with their use of the “AWS” branding anyway.

Amazon Technologies Inc AWS Trademark Applications

On October 9, 2012, Amazon Technologies Inc. (“Amazon Tech”) applied to register “AWS MARKETPLACE” as a trademark in Class 42 (TM No.11577355). This was rejected by the China Trademark Office in September 2013 because it was similar to Yanhuang Yingdong’s “AWS” trademark.

On September 13, 2017, Amazon Tech applied to register an “AWS and device” trademark in Class 42 (TM No.26377486). This was also rejected. Amazon Tech applied for re-examination of the rejection but this failed. The ruling was that the distinctive part of the trademark applied for was “AWS” and this was similar to Yanhuang Yingdong’s trademarks. Pressing on, Amazon Tech applied to the Beijing Intellectual Property Court for review of the re-examination decision, but also lost that case.

Yanhuang Yingdong High Court Proceedings for AWS Trademark Infringement

Yanhuang Yingdong commenced trademark infringement proceedings against Amazon Beijing and Guanghuan Xinwang as co defendants (together the “Defendants”) in the Beijing High Court, seeking orders to cease the use of “AWS” and for damages. The Beijing High Court was the appropriate venue because of the amount of damages sought.

The case was accepted on July 12, 2018. Pre trial, the Court ordered the parties to exchange and review evidence three times: June 10, 2019; June 13, 2019; and June 27, 2019.

Remedies sought by Yanhuang Yingdong

  1. Guanghuan Xinwang should immediately stop its infringing activities including any use of “AWS” and “AWS and device”: on its website; as key words for Internet search; on the website amazonaws.cn; and stop use of these and other similar marks in commercial activities.
  2. Amazon Beijing should immediately stop its infringing activities including any use of “AWS”, “AWS and device” and other marks similar to them in marketing and promotion for cloud computing services at its official wechat account.
  3. The Defendants should compensate Yanhuang Yingdong with RMB 300,000,000 (approx *USD 46,438,190).
  4. The Defendants should also compensate Yanhuang Yingdong with RMB 260,000 (approx *USD 40,246) for its expenses incurred in stopping their infringement; and
  5. The Defendants should make an announcement on China Intellectual Property News to mitigate the effects of their infringement.

Beijing High Court Decision

The Beijing High Court rendered its final decision on May 6, 2020

The Court stated that there were two issues before it: whether the Defendants have infringed the trademark rights of the Plaintiff; and, if infringement can be established, what liabilities should be assumed by them?

The Court held that the Defendants had infringed the trademark rights of Yanhuang Yingdong.

The uses of “AWS” and “AWS and device” by the Defendants have the function of identifying or showing the source of goods or services. This is trademark use.

Guanghuan Xinwang had argued that its use of AWS was merely referring to the technology it had adopted for its services but the court held that on the evidence this argument could not stand.

The Court reviewed the evidence and held that Guanghuan Xinwang had used “AWS” and “AWS and device” with the intention to indicate the provider and sources of its products and services.

The Court further held that the evidence showed that in its official wechat account “awschina”, Amazon Beijing used “AWS” and “AWS and device”. Similarly on its website “amazonaws-china.com”, Amazon Beijing used the “AWS” logo and also put up statements like “AWS products, services and prices”, “how to pay for AWS”, “AWS free package”.

Continuing, the Court held that the distinctive part of the trademarks “AWS” and “AWS and device” used by the Defendants is “AWS” and this is the same as the trademarks relied on by Yanhuang Yingdong. They were used in categories of service that were also similar to those covered by Yanhuang Yingdong’s “AWS” trademarks.

Having established infringement as pleaded, the Court turned to the question of damages.

Relying on evidence of profits in Guanghuan Xinwang’s accounts, the length of the infringing period, and other relevant facts disclosed by the evidence, the Court held that the basis for calculating infringement compensation was RMB 38,231,500 (Approx *USD 5,918,006).

Turning to Amazon Beijing, the Court held that it should have been aware of the Plaintiff’s “AWS” trademark registrations when its trademark application was rejected. Despite this it intentionally continued to infringe by using the “AWS” mark. This made it a very serious infringement.

Further, the Court noted that the Defendants had increased the negative impact of their infringement by objecting to the jurisdiction of the Court and delaying proceedings by 8 months.

Because of this the Court decided that punitive damages were warranted: the Defendants should compensate the Plaintiffs at twice the basis for compensation – an amount of RMB 76,463,000 (Approx *USD 11,836,012).

The Court also supported the Plaintiff’s compensation claim for the reasonable expenses incurred in this case – RMB 260,000 (Approx *USD 40,246).

Commentary

China is an IPR jurisdiction with its own characteristics that must be understood and taken account of.

Unfortunately, this is yet another trademark case where a large company has apparently failed to understand, at its cost, that China is a “first to file” trademark jurisdiction, not “first to use” as in some other jurisdictions. We have previously reported on aspects of this, including the importance of a Chinese language version. Examples  here, here, and here.

Another China characteristic is the weight given to words and letters in a “device” mark when considering distinctiveness. They are very important!

It seems that Amazon Beijing was formed on April 13 2012. Yanhuang Yingdong’s first AWS trademark, its registration in Class 42 covering services like computer programming was applied for registration on September 1, 2004 and approved for registration on February 7, 2008.

Amazon Tech applied for its “AWS MARKETPLACE” trademark in September 2012, five months after the formation of Amazon Beijing.

In this case, as in many others, the true cost is not only measured in money. It is the loss of branding in a major world market.

There is no China trademark action that is more cost effective than getting experienced on the ground advice and direct filing in China.

An appeal?

After the decision a Wall Street Journal report quoted an Amazon representative as saying: “Amazon was the first to use the “AWS” logo in China to sell cloud services by many years. We strongly disagree with the court’s ruling and have appealed the case to the Supreme People’s Court.”

At the China Supreme Court level it can take a long time for an appeal to be listed for hearing. We have not yet seen any relevant information about the appeal referred to in the WSJ quotation.

Take-aways

  • The individual characteristics of China’s IPR regime should not be ignored.
  • Navigating China’s IPR regime is all about detail and on the ground advice is important.
  • China is a first to file jurisdiction and this is an important difference from many other jurisdictions.
  • Prior use of a trademark outside China carries little, if any weight in China.
  • Any business planning to invest in, appoint an agent or distributor for, or sell product into China, should, before anything else, register their trademarks in China. They should also register and control the Chinese language version of their trademark. Almost every product and service in China is known by its Chinese brand name.
  • Remember that filing a trademark directly in China is almost always the least expensive trademark related action that can be taken. Using the Madrid Protocol may not be the most cost effective China trademark solution for your needs. 

 

Graham BROWN and PENG Wei

 

Introduction

The Madrid Protocol, associated with but separate from the Madrid Agreement, is an international agreement about trademark registration. Registration of a trademark in a member jurisdiction can be extended to other member jurisdictions. It is very convenient and cost effective to register in multiple jurisdictions. It does not always work perfectly, however, because the detail of the registration process is not identical in every member jurisdiction. Using the Madrid Protocol does not change that. Unfortunately, despite being such an important trademark jurisdiction, China is one where the operation of the Madrid Protocol can be problematical. Our general recommendation is that if China is an important business jurisdiction, direct filing in China is preferable.

The China Trademark Registration Certificate

The China Trademark Registration Certificate is evidence of registration of a China trademark. It is an important document for enforcement and use of a trademark in China. Unfortunately, it is not routinely issued when a trademark is filed using the Madrid Protocol. China trademarks filed that way receive a Statement of Grant of Protection, which is not the same thing.

Without the China Trademark Registration Certificate, many remedies and enforcement tools are not available in China.

The China Trademark Registration Certificate, for example, is essential evidence for a Chinese court to enforce a China trademark. It is also required to register with the China Customs for border trademark protection. If a trademark is registered with China Customs they have the power to stop infringing goods crossing the border. A very important enforcement tool that is not used as often as it could be by foreign trademark owners.

E-commerce platforms in China also usually require the China Trademark Registration Certificate to be provided before their platform can be used.

The Madrid Protocol – getting the China Trademark Registration Certificate

Once a China trademark has been successfully registered using the Madrid Protocol, a China Trademark Registration Certificate can be applied for. As with a trademark filed directly in China, a local trademark agent must be used to get the Trademark Registration Certificate. There is a 12/18 month period dating from the date of Madrid Protocol notification which must have elapsed before applying for the China Trademark Certificate. If the applicant country is a member to the Madrid Protocol only (such as the USA), the period is 18 months. If the applicant jurisdiction is a member to both the Madrid Protocol and the Madrid Agreement (such as the Netherlands), it is 12 months. Typically, it takes 3-4 months from the date of application for the China Trademark Registration Certificate to be issued.

Commentary

China is a very important trademark jurisdiction but has its quirks that do not always mesh perfectly with the Madrid Protocol. Balancing the expediency of using the Madrid Protocol against the certainty of filing directly in China is a task that a prudent IP professional or brand owner will take seriously.

Take-aways

  • The Madrid Protocol is not equally convenient and cost effective in every jurisdiction where it can be used.
  • The detail of China’s trademark regime needs to be taken into account before a decision to use the Madrid Protocol to register a trademark there.
  • The Madrid Protocol’s Statement of Grant of Protection does not give the same benefits in China as the China Trademark Registration Certificate.
  • Price is only one of the considerations in registering a China Trademark – knowing how it all works on the ground is the key.

© WEI Xin 2021. The assistance of ZHAO Wei in the preparation of this article is gratefully acknowledged. Any errors belong to the author.

Introduction & background

The China Trademark Law underwent its Fourth Amendment on April 23, 2019 (“Amendment”). The Amendment is intended to regulate filings so that bad faith trademark filing is more difficult. It also provides for increased compensation for trademark infringement. The Amendment became effective on November 1, 2019.

On October 11, 2019 the document “Several Rules in the Administration of Trademark Filing and Registration” (“Implementing Rules”) was issued by the China National Intellectual Property Administration of the State Administration for Market Regulation to implement the changes needed by the Amendment. These will become effective on December 1, 2019. Implementing Rules are very important as they set out the formal guidelines for how the law is to be practically administered.

These changes are both good and bad news for those doing business with China. The good news is that the China Trademark Law now has more specific measures to restrict “bad faith” trademark filings and statutory compensation for trademark infringement has been increased. The bad news is for the victims of rent seeking trademark opportunists that have registered foreign trademarks. They may be subject to claims for the increased statutory compensation.

The recent decision of the China Supreme Court that OEM manufacturing in China solely for export can infringe a China trademark should be of particular concern. (Our article about this is here).

The changes to the China Trademark Law

Changes to the China Trademark Law brought about by the Amendment and its Implementing Rules include guidelines for detecting bad faith registration and increased compensation for infringement:

Bad faith

Applications for a trademark with no intention to use may be regarded as a bad faith filing and rejected.

The trademark examiner is required to consider the following factors to determine whether the application is in good faith with the intention to use the applied for trademark:

  1. How many trademarks have been applied for by this applicant and/or its affiliates and in which class(es)? How many of these trademarks have been transferred by the applicant and/or its affiliates to others?
  2. The industry the applicant is engaged in and the operational status of the applicant in it.
  3. Precedents: including administrative decisions, verdicts and judgements in which the applicant was held to be filing trademarks in bad faith or infringing the trademark rights of others.
  4. Is the applied for trademark similar to any famous or well-known mark? If yes, how similar are they?
  5. Is the applied for trademark similar to any celebrity’s name, enterprise trade name, short name or other business logo? If yes, how similar are they?
  6. Other factors the trademark examiner believes to be relevant.

Trademark examiners who believe that a trademark application is not filed for use, can reject the application directly and also impose an administrative penalty on the applicant. Punitive actions can include, a warning, an administrative fine of three times the illegal income but not more than RMB 30,000. If there is no illegal income, not more than RMB 10,000.

Consequences of infringement

The cap on statutory compensation for trademark infringement is raised to RMB 5 million. In the prior version, the cap was RMB 3 million.

Punitive damages for repetitive or serious trademark infringements are higher, and can be 1 to 5 times the compensation amount. In the prior version, punitive damages were 1 to 3 times the compensation amount.

Counterfeit products shall be destroyed if requested by the trademark owner, rather than being sold by the counterfeiter after removing the relevant trademark.

Trademark agents

Trademark agents will be under stricter supervision. Trademark agents must not facilitate bad faith trademark filings and will be punished for breach.

Commentary

These changes to the China Trademark Law are a step in the right direction. The practical context of the huge numbers of China trademark applications – 7,310,000 in 2018, cannot be ignored. Training staff to understand and implement the changes, particularly as they apply to bad faith registrations, is a challenge yet to be met. It is too soon to know how effective the guidelines for examiners will be in practice.

The changes are a direct response to two important issues in the current China trademark system: rent seeking opportunists registering foreign trademarks to extort the offshore owners; and insufficient compensation for trademark infringement.

Bad faith

China has a first to file trademark regime. An applicant for a China trademark is currently not required to prove use or intended use of the mark when the application is filed. As a result numerous rent seeking opportunists have registered foreign trademarks as their own in China. This has been a serious issue for a long time and adversely impacts China trade.

There have been many signs that the authority responsible for administering the China Trademark Law is determined to tackle “bad faith” trademark filings. For example, an official of the China National Intellectual Property Administration recently said in a public speech that in 2018, about 100,000 abnormal trademark applications were rejected by the China Trademark Office at the registration and opposition stages.

The changes to the China Trademark Law made by the Amendment and the new Implementing Rules are expected to play an important role in limiting new bad faith trademark filings. But it remains to be seen if the examiners can or will follow the steps set out in the Implementing Rules to identify bad faith filings.

How, for example, will they determine the status of an applicant in their particular industry? Or similarity to “any celebrity’s name, enterprise trade name, short name or other business logo? Training to understand the requirements and additional time to review each application thoroughly would be required.

The Amendment and Implementing Rules are prospective in operation and have no direct effect on trademarks already registered. They do however, strongly suggest the “official” indicia of bad faith filing. This will be useful in challenging a trademark registered under the previous incarnation of the China Trademark Law.

Some bad faith applications will be identified by examiners. It seems likely, however, that these “bad faith” indicia will have their greatest impact in the preparation of oppositions to registration during the gazettal period. Similarly, they can play an important role in challenges to an already registered trademark. Activity in these areas of trademark work will probably increase dramatically.

Unfortunately too many foreign applicants abandon their claims too soon. Far too many winnable cases are lost by being abandoned too soon by foreign applicants.

The present changes with their indicia of bad faith registration provide an additional path to challenge an existing China trademark by establishing that it was registered in bad faith.

Compensation

In 2013, China raised the cap for statutory compensation to RMB 3 million (from RMB 500,000). Now, only 6 years later, the cap for statutory compensation has been increased to RMB 5 million. This provides stronger trademark protection for legitimate business operators. It also substantially increases the potential costs of counterfeiters in trademark infringements.

Unfortunately, the increase in statutory compensation in the China Trademark Law may have unintended consequences. The increased compensation will be also available to rent seeking opportunists that have already registered foreign trademarks in China. If the accused infringer cannot defend itself it will face the risk of the higher compensation amount.

The 2013 version of the China Trademark Law (and continuing) provided that an alleged trademark infringer could have a defence if the trademark owner had not used the trademark in the previous three years. The court could then require the trademark owner to submit evidence of use.

If the trademark owner could not prove required use, the claim for compensation would fail.

 

Take-aways

  • Registering a trademark directly in China remains the most certain and cost effective means to protect a trademark.
  • The real force of the present changes is likely to be in founding arguments for opposition during the gazettal period and for objections to existing trademarks.
  • Examiners may identify some bad faith applications, and that will be welcome, but the sheer number of filings in China is a constraint at that level. China trademark applicants and owners should be proactive in challenging bad faith registrations and applications.
  • Increased compensation will be welcomed by trademark owners but may be a problem for victims of rent seeking opportunists.
  • The China Supreme court has ruled that OEM manufacture solely for export can infringe a China trademark. (Our article about this is here).
  • Ensure that you get advice about contested trademark matters from advisers with real court experience in trademark work. Abandoning a trademark application too soon is a costly exercise.
  • Only licensed Chinese lawyers can appear in a Chinese court.

Introduction & background

“… Don’t worry, we have the NNN agreements in place….”

A snippet of a telephone conversation overheard in the lounge of a major hotel in New Orleans. The speaker was American, presumably a lawyer, and speaking confidently to a client about a China manufacturing deal.

Many, including lawyers, now regard the NNN agreements as the key to risk management in dealing with China. That is an error.

NNN agreements

The NNN agreements (non-disclosure, non-compete and non-circumvent) have been the subject of much Internet chatter and numerous articles. Unfortunately, their claimed effectiveness gets fortified only by repetition. Little, if any, of the NNN commentary comes from China licensed local or foreign law firms. Licensed Chinese lawyers are also mostly silent. Why?

China is a sovereign country

China is sovereign country. It is a Civil Law jurisdiction with its own civil procedure, court system, trial procedures and rules of evidence. As might be expected, it is a little different from other Civil Law jurisdictions. It is totally different from a Common Law jurisdiction. Commercial and legal strategies that might be perfect elsewhere may not be as effective in China.

NNN agreements are just contracts

NNN agreements are just contracts. A contract by definition is an agreement enforceable at law. To have commercial value, a contract needs to be technically and practically enforceable. Enforcement has to be cost effective to be practical. This is rarely addressed by NNN commentary where various remedies are mentioned as if they are items on a menu awaiting selection.

A brief contract refresher

A contract can only bind the parties to it. So your remedy must come from the other party to a contract. Your counter party. If others offend you must be able to prove a material link in the offending to your counter party. Your counter party is the only one that you can sue in contract.

A basic principle in contract is that if it is breached, the innocent party should be restored to the position that they would have been in if the contract had been fully performed. The preferred remedy is damages or monetary compensation.

Sometimes, although it is known that the contract has been breached, there are not yet losses that can be quantified in terms of money. It might be very clear however that there will be real losses in the near future.

Then an injunction (an enforceable court order to do or refrain from doing something) can be sought. These take two forms: an interim injunction restraining the other party until a full court hearing is completed; and a permanent injunction issued at the end of the case as part of the judgement.

To end this very quick and incomplete outline, there are also liquidated damages. Sometimes it is difficult to quantify and prove the actual amount for damages. Parties to a contract might agree, for example, that delayed delivery will result in damages of $5,000 per day. There are jurisdiction specific rules about this.

Each of these remedies is discussed below in the context of NNN agreements.

NNN remedies for breach

The NNN agreements are just contracts for specific purposes. They may also be terms to similar effect in more comprehensive contracts.

Breach scenarios

Weeks, months or years after your China contract has shipped, something very similar or identical appears on the market. Originating from a city that you have never visited and from a company that you have never previously heard of. You suspect that your previous counter party may have something to do with it. What then?

You may have actual losses to support a claim for damages. The issue then is to find and prove the link to your previous counter party so that the NNN agreements can be enforced. All the issues referred to below, except showing actual losses, are there. You have the burden of proof.

Sometimes contracts are breached, but there are no immediate losses. For example, you have just become aware that your miscreant counter party has set about copying your tooling – say a mould for making plastic parts. Or your confidential information has been disclosed, but preparations for use are ongoing. Or your competitor seems to have new knowledge about how to make products very similar to yours.

Do you have to sit back and wait until your business is really harmed so you can show monetary losses? That is one option, but who wants to wait until their business suffers harm? Enter the injunction.

China injunctions

Injunctions are hard to get in China. Funds have to be guaranteed to offset any potential losses of the injuncted party if the case is lost. Except for IP infringement or unfair-competition, interim injunctions are rarely issued by the courts. At the end of a case a final injunction may be issued, but that can be long after the event. Chinese courts are very cautious in granting any injunction and would usually review the actual substance of the whole case for an interim injunction, and would not be easily persuaded. Because of the different role of judges, prior contractual consent to injunctive relief is largely irrelevant.

Liquidated damages

Because of the difficulty in getting an injunction in China, NNN advocates often suggest that substantial liquidated damages be specified. Millions of Renminbi, the Chinese currency, are sometimes suggested as the amount of liquidated damages to induce fear of breach in the other party.

The real problem with that strategy is Chinese law. Chinese law provides that where there is a material discrepancy between the amount of liquidated damages and the actual damages, either party can apply to the court to set the liquidated damages aside or to reduce them to align with the actual harm suffered. If the court finds that the agreed amount is not fair, it will adjust the claim accordingly. In our simple examples above you don’t yet have any actual losses. It is going to be hard to sustain an argument for your liquidated damages.

Freezing bank accounts

NNN advocates also suggest that the counter party will fear having its bank accounts frozen by a Chinese court (an interim remedy analogous to an injunction that is available in China). The advocates are right: they will fear that – to a point! Let’s take a realistic look at this remedy.

You are the plaintiff and have the burden of proving your case. There is no pre-trial discovery and almost all relevant information is in Chinese. There are few publicly accessible registers of business information. You have to prove to the satisfaction of the court that you have losses because of your counter party’s breach of NNN obligations. Stop and think about that for a moment. In China, as everywhere else, there is a big gap between believing something has occurred and being able to prove it in a court of law. Particularly in a court system that prefers documentary evidence that has been notarised. Quite rightly, the first step in freezing a bank account, or preserving evidence, is to file your case. To do that you will need to have evidence linking your counter party to the breach. Filing fees will be based on the amount you claim as compensation – your millions in liquidated damages?

Back to freezing bank accounts. First, you have to be able to identify to the court the bank account and its links to your counter party. Knowing litigation is pending there may be a move to a different bank. You will have to prove to the court that your rights will be irrevocably damaged if the court does not approve your application to freeze the bank account. Then you have to deposit funds with the court or provide a guarantee – 30% of the amount to be frozen is typical. The wisdom of the RMB 10 million specified as liquidated damages in your NNN agreements may not be quite so apparent now. And the difference between actual and liquidated damages is not relevant at this point.

It is also not simply a matter of transferring money in. China is a foreign exchange controlled country. It is very difficult to get the security funds into China. The usual practice is to get a guarantee from a local security company. They charge a percentage of the guaranteed amount for this. They will typically also require security.

Damages

Damages are the routine remedy for breach of contract in China, as elsewhere. The process for proving the amount must take account of China’s rules of evidence, but that is not unduly onerous.

Commentary

The Internet is an amazing source of information. Unfortunately, much of the information about China is incomplete, out of date, or just plain wrong.

Are the NNN agreements silver bullets? Clearly not! But that does not mean that you are always firing blanks. As part of a well thought out and executed China engagement strategy they have a role, but they are not a substitute for real management of the China project.

For example, have you registered all of your registrable IP in China? Calling it IP in a contract does not make it legally so.

Legal and other due diligence is far more important than the NNN agreements because it is preventative, not attempting to be remedial. Who is the other party? What is their reputation in China? Do they have the necessary approvals and licences to make your product? Are they financially sound? Are they really a manufacturer or just a hidden agent for a real manufacturer? Or even worse, are they fraudsters?

Practical China knowledge and experience in the drafting of China specific contracts is important. The often seen verbiage about liquidated damages being a carefully considered estimate of damage, or consent to injunctive relief, or agreement not to oppose injunctive relief, usually suggest that it is not a “China” contract. Understanding where things are likely to go wrong in China and having contract terms and procedures to cover them is important.

If you have done your homework the NNN agreements may be an added security. We use them in appropriate cases but we make sure our clients understand their limitations. Our clients also know that if you have really done your homework, and have contracts drafted specifically for the purpose, the need to rely totally on enforcing NNN agreements will probably not be an issue of great concern.

Take-aways

  • A contractual right without a cost effective remedy, or a remedy at all, is empty.
  • NNN agreements provide little real protection in many common contract situations.
  • China is a sovereign country.  It is a Civil Law jurisdiction. Its civil procedure, court process, rules of evidence and the role of judges follow that system.
  • China legal strategies based on another system are unlikely to be effective. Irrespective of how effective they might be elsewhere.
  • If NNN agreements are unlikely to be practically enforceable in your particular situation, you are just getting empty comfort from moving risk around on paper.
  • There is no substitute for real legal and other due diligence when engaging with China.
  • Legal advice should be supported by on the ground experience in China, not the Internet.

© Graham Brown 2019. The assistance of Peng Wei and our team in the preparation of this article is gratefully acknowledged. Any errors belong to the author.

 

Introduction

On September 23, 2019, the Supreme Court of the People’s Republic of China (”Supreme Court”) gave its decision in an OEM manufacturing trademark case brought by Honda Giken Kogyo Kabushiki Kaisha (“Honda”) against Chongqing Heng Sheng Xin Tai Trading Co Ltd and Chongqing Heng Sheng Group Co Ltd. (“Heng Sheng”). Overall (“Honda Case”).

The Supreme Court held that the two Heng Sheng entities manufactured OEM motorcycle kits, (“Motorcycle Kits” – presumably CKD) in China for a Myanmar entity and this had infringed Honda’s China trademarks.

This is a very different outcome from previous Supreme Court decisions on the same issue.

Background

PRETUL

On November 26, 2015, the Supreme Court gave its decision in the “PRETUL” trademark case. In this decision, the Supreme Court, for the first time, made it clear that “The use of an identical or similar mark on the same or similar products in OEM manufacturing in China with a China trademark should not be regarded as infringing the rights of the owner of the China registered trademark, because the goods are not available in the China market.” Our article about this case is here.

DONG FENG

Shortly after the Supreme Court issued its decision in the “PRETUL” case, Jiangsu High Court issued its decision on another China OEM trademark case, holding that the defendant Jiangsu Changjia Jinfeng Power Machine Co Ltd was liable for trademark infringement because it knew that the plaintiff Shanghai Diesel Engine Co Ltd’s “Dongfeng” (“东风”) mark is a well-known mark in China, and it did not do what it could to avoid causing trouble to Shanghai Diesel and damaged their interests. Our article about the Jiangsu High Court case is here.

This decision was later reviewed by the Supreme Court and gave its decision on December 28, 2017. The Supreme Court reversed the Jiangsu High Court decision finding that the defendant, Jiangsu Changjia Jinfeng Power Machine Co Ltd, had done due diligence to confirm the trademark rights of the Indonesian Company. No infringement of a China trademark had occurred because the goods were OEM manufactured and were all exported.

The Honda Case

Findings of fact

  1. Plaintiff Honda is an international enterprise that manufactures motorcycles and has registered relevant three trademarks in China. All were valid when this case was heard. 314940 the word HONDA, 1198975 the framed H device commonly seen on Honda cars, and 503699 the HONDA with wing device associated with Honda motorcycles.
  2. Defendants Heng Sheng are affiliates. Heng Sheng Trading signed a contract with a Myanmar company on April 3, 2016 for manufacture of Motorcycle Kits with the trademark “HONDAKIT”.Although the contract was named as a Sales Contract it was from its terms actually an OEM manufacturing contract. Heng Sheng Group was the actual manufacturer and Heng Sheng Trading was responsible for the logistics of exporting the Motorcycle Kits.The director of the Myanmar company owns the trademark “HONDAKIT” in Myanmar. He authorized Heng Sheng to use this trademark in its OEM manufacture of the contracted Motorcycle Kits. All Motorcycle Kits manufactured by Heng Sheng for the Myanmar Company were for export to Myanmar.
  3. Kunming Customs contacted Honda on June 30, 2016 with the Notice of Confirmation of the Intellectual Property Rights for Imported and Exported Goods. According to the notice, they had detained 220 Motorcycle Kits bearing the trademark “HONDAKIT” and these products may infringe Honda’s trademark rights. Kunming Customs requested Honda to take action if it wanted to.On July 12, 2016 Honda paid the security deposit and applied to Kunming Customs for further investigation and detaining of the Motorcycle Kits. Kunming Customs issued its investigation decision on August 22, 2016 notifying Honda that the Customs could not decide whether infringement had been established. Honda should therefore file a court case to determine the issue. Kunming Customs also said that they would further detain the Motorcycle Kits for 50 working days and then release the goods unless they received a court order to further detain the Motorcycle Kits.

Honda filed its court case on September 13, 2016.

Trial court

The trial court issued its decision on June 1, 2017. The trial court held that the evidence filed by Heng Sheng could not prove that the contract with the Myanmar Company was really an OEM manufacturing contract so it was a sales contract. In the trademark attached to the Motorcycle Kits the word “HONDA” was bigger than “KIT”. This differs from the trademark registered in Myanmar. Such use by Heng Sheng was apparently to take advantage of “HONDA”. On these facts, Heng Sheng should be regarded as a trademark infringer.

Judgement of the Appellant Court

The appellant court overturned the decision of the trial court and gave its judgement on November 28, 2017.

The appellant court held that the sales contract signed between the Myanmar company and Heng Sheng was, by its terms, actually an OEM manufacturing contract. The owner of the Myanmar trademark “HONDAKIT” had signed the contract and the authorization for Heng Sheng to use the trademark “HONDAKIT” in performing the contract.

The Motorcycle Kits made by Heng Sheng for the Myanmar Company were all for export to Myanmar. Chinese customers would have no access to these products. Because of this there was no trademark infringement.

Appeal by rehearing at the Supreme Court

The Supreme Court decided to reconsider this case on September 14, 2018, and concluded its review just over a year later on September 23, 2019. The Supreme Court overturned the decision of the appellant court and held that Heng Sheng had infringed Honda’s trademark rights.

Reasons

  1. It is not right to regard “use of a China trademark in OEM manufacturing” as an exception to trademark infringement because this is against the basic principles of deciding trademark infringement.
  2. Trademark registration and protection is territorial and a trademark registered in a foreign country is not protected in China. It follows that an authorization for a domestic OEM manufacturer to use an offshore registered trademark should not be regarded as a legitimate right to be protected in China. Nor a defense to infringement of a China registered trademark.
  3. The key function of a trademark is to identify the source of goods or services. Use of a trademark consists of many processes including attaching the trademark to the goods, distributing the goods in the market, their sale etc. In an OEM manufacturing case, the relevant public includes the customers and the business operators involved in the manufacture and logistics processes. A business operator such as a logistics company can access the relevant trademark and products. Because of this, the possibility of causing confusion of the relevant public still exists in an OEM arrangement.Further, with the development of e-commerce and the Internet, OEM manufactured products may come back to the China market in some way. The Chinese consumers may travel abroad and there come into contact with the OEM manufactured products. All of these have increased the possibility of confusion of the relevant public.

Commentary

This decision effectively removes the certainty that prior decisions had so recently established for China OEM manufacturers and their customers.

It is not clear from the judgement what concerns the Supreme Court sought to address, or what deficiencies resulted from their previous decisions that needed to be remedied.

The reasons given by the Supreme Court in its judgement are not so strong that the underlying purpose is self evident.

The confusion that might arise among logistics operators and others handling the goods as part of the OEM manufacturing process is speculative and definitely very limited. It stretches the concept of “relevant public” a long way. Almost anyone, whether they recognise the trademark or not, would be included by that expanded definition.

OEM manufactured goods bearing a trademark may come back to China and could conceivably result in some marketplace confusion. But a more specific, and legally congruent remedy would be to target the goods on their way back into China, not on their journey out.

Further, the fact that Chinese consumers may come into contact with OEM manufactured goods outside China is not a China trademark issue at all. That reasoning compromises the territorial restrictions on trademark protection, including that the “relevant public” would usually be thought of as people in the trademark territory: in this case China.

The Supreme Court, has to some extent given Honda implied protection against the possible infringement of its China trademark outside China. A contradiction in terms.

Take aways

  • China is not a case law country but decisions of the Supreme Court have the effect of “judicial guidance” and decisions are usually followed by local courts. If a court does not follow the Supreme Court’s decision the Supreme Court still has the right to revoke that lower court’s decision on appeal as happened in the “Dongfeng” trademark dispute.
  • Clearly this change in approach has extensive potential consequences for those that source OEM manufactured goods from China and those that manufacture them.
  • The only realistic protection for OEM manufacturing now is to register trademarks in China before contracting OEM production
  • In many cases this is not possible because opportunists have already registered the foreign trademark in China. That was the problem that the previous decisions alleviated.
  • Despite all of the uncertainty raised by this case, one thing is clear. Registering trademarks with China Customs assists in preventing infringing activity

© Wei Xin 2019. The assistance of our team in the preparation of this article is gratefully acknowledged. Any errors belong to the author.

Introduction & background

China trademark can be anything but straight forward as Christian Laboutin’s long pursuit of a China trademark illustrates. The trademark in question, a distinctive red sole on equally distinctive shoes for women is a stand out in the crowd point of  difference.

The traverse through the China trademark regime began for Christian Laboutin when they sought, on April 15, 2010, to extend their existing mark to become a China trademark. They filed the following, seeking a China trademark with “high heeled shoes” as the goods designation. (Color may not be accurately represented).

Christian Laboutin China trademark Filed

China Trademark Office

The China Trademark Office (“CTO”) rejected the application in October 2010, finding that the trademark applied for was devoid of any distinctive character regarding the designated goods.

China Trademark Review and Adjudication Board

Undeterred, Christian Laboutin applied to the China Trademark Review and Adjudication Board (“TRAB” – consolidated into the National Intellectual Property Bureau in 2019) for review.

On January 22, 2015, the TRAB decided that the trademark applied for was a device mark consisting of the shape of one high-heel shoe with the bottom in a single color and inherently not distinctive.

The TRAB also held that the evidence provided to them did not prove that distinctiveness had been acquired by extensive use in commercial activity.

Beijing IP Court

Pressing on, Christian Laboutin filed a case with the Beijing IP Court. The case was accepted on June 12, 2015 (Chinese courts have a discretion whether to accept a case).

The Beijing IP Court delivered its judgement on December 20, 2017. It held that the China trademark applied for should be regarded as a 3D trademark, not a device. Accordingly, the case was referred back to the TRAB for them to consider whether the evidence was sufficient to establish the distinctiveness of this 3D trademark.

Beijing High Court

Christian Laboutin then appealed to the Beijing High Court. The case was accepted and the final decision was handed down on December 24, 2018.

The Beijing High Court decided that the China trademark under review was not a device mark or a 3D mark but a trademark made up of a single color used in a specific position – the sole of high heeled women’s shoes.

The Beijing High Court held that Article 8 of the China Trademark Law provides that any “signs” which can distinguish the commodities of a natural person, a legal person or other organisation from those of others can be used and registered as a trademark. The China trademark applied for by Christian Laboutin is within this definition.

The Beijing High Court accordingly requested the TRAB to reconsider the distinctiveness of the China trademark applied for based on the Beijing High Court’s findings of its true nature.

At the time of writing the TRAB has not made its decision.

Commentary

China Trade Mark Law – Article 8 and relevant part of Article 9

Article 8: Any signs, including words, graphs, letters, numbers,
three-dimensional symbols, color combinations, sound or any
combination thereof, that are capable of distinguishing the goods
of a natural person, legal person or other organization from
those of others may be applied for registration as trademarks.

Article 9: A trademark submitted for registration shall bear
noticeable characteristics and be readily distinguishable, and it
may not conflict with the legitimate rights obtained by others
earlier. …(WIPO translation).

Clearly, it has taken Christian Laboutin a very long time and a lot of money to legally establish the true nature of the China trademark applied for. It is not so clear, however, why it was so difficult to achieve this.

We have not seen the pleadings or the evidence in this case but the device mark and 3D findings do not seem to fit well with the practical reality of what has made shoes from Christian Laboutin stand out in use – the flash of red sole as the wearer stands, walks, and moves.

It is also not possible for us to know whether any limitations that might have been in the application were due to extending an existing mark as a China trademark as opposed to a direct China trademark application. Overall, we find that direct application usually leads to more predictable results.

China has been cautious in its approach to non traditional trademarks: sound, position, 3D, color and the like. They are quite difficult to register without demonstrable distinctiveness acquired by use in the China market place. It seems that the Beijing High Court has read “including” in Article 8 as “including but not limited to”. A very positive step in China’s trademark jurisptrudence.

Whether it is possible to register a China trademark of a type not specifically mentioned in Article 8 of the China Trademark Law has been long debated among China scholars and IP practitioners. The CTO has generally taken a very conservative approach. The decision of the Beijing High Court that a trademark type not specifically mentioned in Article 8 of the China Trade Mark Law can be registerable is welcome.

So far as we can ascertain, to date no single color trademark or position trademark has been approved for registration in China.

This decision of the Beijing High Court opens up the possibility of more scope for non traditional trade marks in China. It must be kept in mind, however, that China is not a case law jurisdiction and this decision provides guidance, not legal certainty.

The final decision of the TRAB is greatly anticipated by all parties, including the trademark practitioners in China. If the TRAB approves this trademark, it will be a big step in the development of the China trademark registration system with particular interest to those with non traditional trademarks.

There is also the nice legal issue of whether the TRAB will consider the distinctiveness in the market as of the date of the original China trademark application, the original TRAB review application, or now.

Wei Xin (Wei Xin currently chairs the INTA East Asia & Pacific NTM Sub-Committee)

 

 

 

 

Introduction & background

Pets are very popular in China

Domestic pets have become an integral and much loved part of the life of many Chinese. Different types of animals and birds may be kept as pets, but cats and dogs have become extremely popular among city dwellers adding a new dimension to the China pet food trade.

A huge market has grown up to cater to pet owners wanting to look after and pamper their pets and imported pet food is a significant part of it.  Sources of supply have grown rapidly, and range from pet shops and other retail outlets through to E-commerce in all its forms, including cross-border. Overall this market has grown faster than its regulatory regime.

China pet food regulatory system changes – overview

On April 27, 2018 China’s Ministry of Agriculture and Rural Affairs (“Ministry of Agriculture”) issued Announcement 20 which referred to attached regulations. Some specifically directed at cat and dog food. The changes were effective from 1 June, 2018, but with a grace period until August 31, 2019. From September 1, 2019 the new regulations will apply with full force.

China has a complex regulatory system for the import of pet food that involves multiple government departments and levels. In summary:

  1. the pet food should be registered at the Ministry of Agriculture;
  2. an offshore pet food manufacturer should be registered at the China General Administration of Customs (“China Customs”);
  3. a domestic pet food importer should be formally recorded at the local delegate of China Customs; and
  4. the pet food should pass the Customs quarantine and inspection, and for pet foods containing animal ingredients or formula pet food, a Permit for Animal and Plant Import is needed.

Announcement 20 also made it clear that:

  • existing holders of a valid import registration certificate for their cat and dog food product could continue to export and sell until that certificate expired, but then a new application would have to be made;
  • if dog and cat foods were presently being imported without an import registration certificate, an import registration certificate should be applied for and obtained by September 1, 2019; and
  • holders of an existing import registration certificate for additive premixes to be directly consumed by a pet cat or dog (not as part of a product manufactured by others) should apply for and obtain a new import registration certificate by September 1, 2019.

Cross-border E-Commerce

Certain E-commerce modes, but not all, are presently excluded from the full scope of the changes in Announcement 20 but labeling and hygiene requirements should be met.

Key issues for the China pet food trade

  1. The Methods on the Administration of Pet Feed provide that they only apply to cat and dog food and pet formula feeds and pet additive premixes to be directly consumed by cats and dogs.
  2. An offshore manufacturer should obtain the import registration certificate for pet feed for each product before it can be exported to China. It usually takes about 6 months to obtain a certificate for a product.
  3. Imported pet feed should comply with the Labeling Rules for Pet Feed. A Chinese language label is essential and should include required information such as place of origin, details of the offshore manufacturer, details of the Chinese importer and its contact information. Expert advice should be obtained about this.
  4. Trademark is an important issue arising from this labeling requirement. The Chinese name of the product and the manufacturer is required on the label, but including them there is no protection from trademark infringement. Both should be trademarked in China by the offshore manufacturer, not the importer.
  5. Pet feed that contains raw materials or additives prohibited in China cannot be imported. A List of Raw Materials for Animal Feed and a List of Additives for Animal Feed have been adopted and will be updated from time to time.

Protecting label information with trademark

As noted above a Chinese language label is required for imported cat and dog food but use there does not give any real rights or protection.

Every product sold in China becomes known by its Chinese name: not the name in the home country language. If the offshore supplier does not decide on and control the Chinese name it wants to use in China, it will get one anyway, but it will almost certainly be controlled by someone else.

Remember that China has a “first to file” trademark system – the first to register the trademark owns it. If the offshore supplier’s name, or its product name, is registered as a trademark in China by someone else the China business is then effectively owned by someone else.

Note that nothing related to a China trademark is less expensive than registering it!

Take away points

  • The present signal from China is clear. The government has tightened its control over the China pet food market, including the manufacture, import and sale of cat and dog food in China. September 1, 2019 is the day of change.
  • The new regulations do not affect all cross border transactions immediately but it cannot be assumed that the current limited exemptions will continue indefinitely, or at all. Anybody directly or indirectly engaged in the China pet food market should consider their position carefully and seek advice.
  • A prudent supplier into the China pet food market, even if presently participating in the exempt E-commerce business, should take the steps to become fully compliant for all forms of the China pet food business.
  • September 1, 2019 is almost upon us. China pet food imports without an import registration certificate (except for the current limited E-commence exception) will very soon be history.

 

New Balance successful on appeal

New Balance was successful in its appeal. The Guangdong High Court of China (“Guangdong HC”) published its judgment regarding the appeal arising from the first instance New Balance case on June 23, 2016. The case was about their use of a Chinese transliteration of New Balance  “新百伦” trademarked in China by others. The lower court previously awarded damages of RMB 98 million to the owner of the Chinese trademark, Mr ZHOU. Our  report on the original case is here.  Although the Guangdong HC reduced the damages to  RMB 5 million, all other findings in the first instance judgement remain unchanged.

Guangdong HC

In deciding to reduce the damages the Guangdong HC Court held that:

  1. New Balance had extensively used “新百伦”in advertising and business. The relevant public already thought that “新百伦” belonged to New Balance or is related to New Balance’s products. This had cut the connection between the “新百伦” trademark and its actual owner ZHOU Yuelun (“Mr ZHOU”), reduced his market scope, and caused him economic damage.
  2.  Mr ZHOU did not submit any evidence to prove the actual loss he had suffered from New Balance’s use of “新百伦”. Because of this the Court refused to determine the damage amount on the basis of ZHOU’s economic loss.
  3. New Balance had registered “N”, “NB” and “New Balance” trademarks in China and had been using them on the packages of shoes sold in China. They never used “新百伦”on those packages.
  4. New Balance used “新百伦” in the product introduction at Tmall and JD e-shops, on the sales slips of authorized stores, in advertisements at its official website, at Sina Weibo, in brochures, and in video advertisements. However, every use of “新百伦” was in conjunction with “N”, “NB” or “New Balance”.
  5. Considering the business size, market share and high reputation of New Balance, it is fair to say that the relevant public distinguished New Balance products by the marks “N”, “NB” or “New Balance” and they purchased New Balance products because of the high quality these marks stand for.
  6. Mr ZHOU proved he had used the “百伦” and “新百伦” trademarks in business in China but failed to prove that those trademarks are famous in China.
  7. To determine the damage amount on the basis of the infringing party’s profits, there should be a direct connection between the infringement activity and the relevant profits. Applying this rule, it is not justified to base the damage amount on the full amount of profits of New Balance in China during the relevant period.
  8.  New Balance submitted a brand evaluation report suggesting that the contribution of “新百伦”to its profits from China market is 0.76%. This means that this Chinese character trademark contributed RMB 1,487,907.97 to New Balance’s overall profits from the China market in years 2011 to 2013 and RMB 1,458,149.81 to New Balance’s profits from shoes in China for the same period.
  9. It is also necessary to consider the following factors in determining the exact damages amount:
    1. bad faith of New Balance in using  “新百伦”with knowledge of Mr ZHOU’s trademarks;
    2. actual damages caused to Mr ZHOU by New Balance; and
    3. the costs Mr ZHOU spent in the case.
  10. The total court filing fees are RMB 1,066,855.  They should be apportioned as RMB 213,380 to Mr ZHOU and RMB 853,525 to New Balance.

Commentary

Overall, the outcome of this appeal is as expected. It remains to be seen whether either party will seek a review by the China Supreme Court and if it is sought whether the Court will accept the case.  The judgment itself is more than 100 pages, unusual for China and mostly reviewing the details of the case.  The findings regarding damages are an important contribution to China jurisprudence and they are consistent with other recent cases.

Choosing and owning the transliteration of a foreign trademark is a very important first step in engaging with China. New Balance decided to persist with using a transliteration of New Balance already registered as a trademark by others. Another transliteration could have been used, and will presumably be used from now on, if an accommodation cannot be reached with Mr ZHOU.

The court held that New Balance’s commercial use of the pre-existing Chinese trademark with actual knowledge was in bad faith.  A clear caution to anyone else facing a similar situation.

There is an emerging China jurisprudence regarding the connection between awarded damages and the infringing use.  This case is consistent with that and other recent cases.

If the time, energy, and actual cost of pursuing these cases is taken into account, it has been a costly exercise for New Balance, despite their win.

Take away points

  • It is always less expensive to register a trademark than it is too try to recover it from others.
  • A Chinese language version of a foreign trademark is an integral part of doing business in China. The Chinese language is as flexible and creative as any other – there is always another possible transliteration if a first choice is not available.
  • A consistent association between the use of the foreign trademark and the Chinese transliteration is important if the foreign brand is to retain its full value.
  • Infringing a Chinese trademark is proving to be a time consuming and costly exercise.

© Graham Brown 2016. All rights reserved.

The assistance of Peng Wei in the preparation of this article is gratefully acknowledged.