Wednesday, August 09, 2006

Eight Years in China (Without Your Logo Getting Used)

Remember the blog on July 21 about a Marketplace Public Radio programme about a Chinese trademark squatter that wanted a ransom from the US Public Broadcasting Service? Read here.

Well, in this radio programme (that is in audio and in written form) Jocelyn Ford interviewed Joseph Simone, lawyer of Baker & McKenzie in Hong Kong.

Ford wrote about Simone : "But he says few companies pay ransom. Most lodge a complaint and that can stop the logo from being used in China for as long as eight years."

I wondered how this could be possible. So I consulted the amended Trademark Law of 2001, the Implementing Regulations of 2002 and in some judicial interpretation, to no avail. Has it anything to do with Well-known trademarks or case law? When the Paris Convention remained silent on the subject, I decided to ask Joseph Simone.

By email Mr. Simone responded to my question:

"If someone pirates your mark, you can file an opposition after it is gazetted in the TMO's Trademark Gazette (Shangbiao Gonggao). The opposition would be handled by the TMO, which will normally take 3-4 years to issue a decision. The TMO's decision is subject to appeal to the Trademark Review and Adjudication Board (TRAB), which is now taking a further 5-7 years to issue decisions in most cases. This is how I got to the eight year figure.

Still further appeals to the courts are possible, which might take 1-2 years."

The Trademark Office (TMO) and the Trademark Review And Adjudication Board (TRAB) are both of the State Administration of Industry and Commerce (SAIC) and under the supervision of the State Council. The first is responsible for the registration and administration of trademarks, while the latter is responsible for handling matters of trademark disputes (article 2 Trademark Law).

Pursuant to article 57 Implementing regulations trademark law 2002, the TMO shall compile and publish and distribute the Trademark Gazette, to publish trademark registrations and other related matters. Articles 22 and 23 Implementing regulations trademark law 2002, deal with opposition against the TMO via an application for trademark opposition and appeal to TRAB via Application for Review of the Opposed Trademark, respectively.

Simone published an interesting article in January 2005 about Counterfeiting in China. Although it is a review of 2004, it is still relevant. See here (pdf). In March 2005 Simone published together with Shihyann Loo a power point presentation about recent developments in anti-counterfeiting in China. See here (pdf).

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