What Can A Famous Food Brand Do Against Footwear Using Its Mark?

As a vegetarian I do not frequent the many McDonald's fastfood joints that can be found in China and which turn the slim people obese, just as they did with the American and European populations. I am not really certain what is on sale inside a McDonald's, but when I was in Shenzhen near the beach I was surprised to see that McDonald's has been diversifying into toe slippers. You could say, well that is not really diversifying, because toes could be considered meat too, although not dead meat. Then again, maybe it was not the fast food chain's idea to put its trademark on the slippers. Let's assume that they did not. What could a(n) (in)famous company such as McDonald's do against such unauthorised use of their mark?

April 23, 2009, China's Supreme People's Court promulgated the 'Interpretation on the Application of the Law Concerning Several Issuels Regarding the Trials of Civil Disputes Relating to the Protection of Famous Trademarks' (Judicial Interpretation on Famous Trademarks judicial interpretation).

So since that time the judicial interpretation clarifies that a famous trademarks registered in certain product/service classes is protected against a mark that is identical or similar but on products/services that are dissimilar.

See Article 10 Judicial Interpretation on Trademarks:

"If the plaintiff files a motion to enjoin the defendant from using a trademark, which is identical with or similar to its famous registered trademark, or enterprise name on dissimilar commodities, the people's court shall, in light of the concrete circumstance of the case, make a ruling after comprehensively taking into account the following factors:

1. the distinctiveness of the said famous trademark;

2. how well the famous trademark is known by the relevant general public that use the commodities using the trademark against which the lawsuit is filed or using the enterprise name;

3. the connection between the commodities using the famous trademark and the commodities using the trademark against which the lawsuit is filed or using the enterprise name;

4. other relevant factors."

This is based on China's WTO obligations to comply to TRIPs.

See Article 16 (3) TRIPs:

"Article 6bis of the Paris Convention (1967) shall apply, mutatus mutandis, to goods or services which ar not similar to those in respect of which a trademark is registered, provided that use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trademark and provided that the interests of the owner of the registered trademark are likeley to be damaged by such use."

This goes further than article 6bis of the Paris Convention of which China is a member since 1985.

See 6bis Paris Convention:

(1) "The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibitthe use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods. These provisions shall also apply when the essential partof the mark constitutes a reproduction of any such well-known mark or an imitation liable to create confusion therewith.

(2) A period of at least five years from the date of registration shall be allowed for requesting the cancellation of such a mark. The countries of the Union may provide for a period within which the prohibition of use must be requested.

(3) No time limit shall be fixed for requesting the cancellation or the prohibition of the use of marks registered or used in bad faith."

So if we apply article 10 Judicial Interpretation on Famous Trademarks.

(1) I think we can come to the conclusion that McDonald's is a distinctive mark;

(2) And that it is well known to the relevant general public (because of its ubiquitous existence); (3) So what exactly is the connection between the commodoties of the famous mark and the dissimilar commodities of the mark that might infringe upon it? What is the connection between food and footwear? McDonald's could argue that the association with toe slippers is not conducive for fueling an appetite for its food, save for some foot fetishists. And this could dilute the brand.

(4) Other relevant factors, could be perhaps the popularity of the McDonald's toe slippers. Are they sold all over China, or just at the beach of Shenzhen. In other words the extend of the (potential) damage for the fast food chain.

Photo/text Danny Friedmann

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Article 6ter Paris Convention Online: Hong Kong (2), China (0), Netherlands (37)

March 31, 2009, WIPO's first electronic publication of signs, emblems etc. protected under article 6ter Paris Convention for the Protection of Industrial Property, see here. On this day (July 13, 2009), if you type in China, you see only the emblem and flag of Hong Kong S.A.R. witn the stylised form of Bauhemia Blakeana. That is a very small number for such a big country such as the People's Republic of China (0) and Hong Kong (2), compared to the tiny Netherlands which protects 37 signs, emblems (including for such collective marks as Holland Cheddar Cheese etc), Germany (128), USA (117), United Kingdom (38), Italy (32). Then again Japan and France each only had two signs in the database.

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Slow As A Turtle? Copyright Protection Expiration in China: Lifetime Plus Fifty

IP Dragon's feline friend has an interesting post December 31, 2008, about the expired protection of copyrights for authors that died seventy years ago, including the painter Wang Zhen (1867-1938), read Mr Jeremy Phillips' article for IP Kat here.

According to article 20 Copyright Law PR of China the rights of authorship, alteration and integrity of an author shall be unlimited in time. Then again, the term of protection for the right of publication and rights referred to in article 10 (5) Copyright Law PR of China (the right of showing, that is, the right to show to the public a work, of fine art, photography, cinematography and any work created by analogous methods of film production through film projectors, over-head projectors or any other technical devices) and 10 (17) Copyright Law PR of China (any other rights a copyright owner is entitled to enjoy) was already expired after the lifetime of the author and fifty years, according article 21 Copyright Law PR of China.

If Wang Zhen's paintings are in a country with a copyright protection of the lifetime of the author plus seventy years, and if this country is a member of the Berne Convention, it has to comply to the national treatment requirement (article 5(1) Berne Convention), which means that this member state has to treat the nationals of every other member state at least as favourably as its own. Article 7 Berne Convention and article 12 TRIPs, however, obligate their respective member states to protect copyright for fifty years. The People's Republic of China acceded to the Berne Convention in 1992 and TRIPs in 2001.

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Comparison Between The IPR in China Relevant Provisions Of the Foreign Trade Law 2004 and 1994

I have just added links to the Foreign Trade Law of the People's Republic of China 1994 and 2004 on IP Dragon's blogroll ( under "IPR in China Laws and Regulations").

The IPR relevant article 6 Foreign Trade Law 1994 is almost identical to article 6 Foreign Trade Law 2004 (most favoured nation treatment and national treatment because of articles 4 and 4 TRIPs, respectively, before 2001 because of article 5 (1) Berne and aricle 3 Paris Conventions)

Article 14 Foreign Trade Law 1994 is similar to article 13 Foreign Trade Law 2004 (the departments that get information from the foreign trade operaters should keep business secrets to themselves, see pages 15-16 Thesis).

Article 27 (2) Foreign Trade Law of 1994 prohibits explicitly infringing upon intellectual property rights and article 27 (5) Foreign Trade Law 1994 "other acts violating laws or administrative rules and regulations" can also be used to base a prohibition against IPR infringement.

It can be concluded from article 14 Foreign Trade Law of 2004 that import and export of goods is not free if law or administrative regulation provides otherwise.
Different from Foreign Trade Law 1994 is that Chapter V of the 2004 amendment is dedicated to Foreign-trade-related Intellectual Property Protection. Article 29 Foreign Trade Law 2004 includes: "Where any of the import goods violates any intellectual property right and, at the same time, endangers the foreign trade order, the foreign trade department of the State Council may take such measures as prohibiting the import of the relevant goods that the infringer has produced or sold for a certain period of time." No word about export goods that violate IPRs. This is in compliance with TRIPs, since article 51 TRIPs only obligates that WTO members shall adopt procedures to enable a right holder that has valid grounds that counterfeit trademark or pirated copyright goods import may take place, to lodge an application. Article 2 Regulations of the People's Republic of China on Customs Protection of IPRs 2003, however, goes beyond this obligation and applies to both import and export.

Article 30 Foreign Trade Law 2004 is to give the foreign trade department of the State Council the legitimacy to take measures in case of an IP right holder that hinders the licensee from questioning the validity of the IPR involved in the license agreements, conducting forced package license or providing exclusive selling back conditions in the license agreement, etc.

Picture: threecee

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James Paradise: WTO Case Will Not Start Before North Korean Nuclear Threat Has Ended

James F. Paradise wrote another thought provoking article on AsiaMedia of the UCLA Asia Institute.

The innovation of TRIPS compared to WIPO's conventions (Berne and Paris) is that disputes about enforcement can be dealt with in a binding manner by a panel of the WTO dispute resolution body. In other words WTO's TRIPS is WIPO with teeth (paraphrasing professor Hugenholtz of IViR).

However, the downside of TRIPS is that it is an integral part of WTO, which results in a hybrid treaty: the protection and enforcement of intellectual property law can get entangled with trade interests. Trade tariffs can be traded off for the protection and enforcement of intellectual property and vice versa. This might not always be in the best interest of IPRs.

Paradise points out that geo-political interests such as the North Korean nuclear threat can take priority over trade interests, including intellectual property:

"Recently there has been speculation that the United States, together with the European Union, Japan and Canada, would bring a complaint against China at the WTO because of inadequate enforcement of intellectual property rights. But it appears now that action of that sort -- should it occur -- will not happen immediately, possibly because the United States needs to maintain China's support in dealing with the North Korean nuclear problem. In September, the United States, the EU and Canada did request that a dispute settlement panel examine their complaint that Chinese tariffs on imported auto parts were discriminatory, the first time a dispute with China had risen to this level in the WTO."

Paradise points out a trend in the business community to cope with the rampant infringement of intellectual property proactively by changing their business strategy:

""We need more flexible business models," said George M. Borkowski at a panel primarily focused on copyright at the Los Angeles Asia Pacific Entertainment and Media (APEM) Summit 2006 last week. Borkowski, a partner of the law firm Mitchell Silberberg & Knupp, added that there is not much agreement within the industry itself about how to proceed."

Is this defeatism? I don't think so. As a company you should both try to prevent IPR infringements, but if they do, you should be prepared to protect and enforce your IPRs ferociously.

Read Paradise's article here.

Paradise wrote earlier an excellent review of Mertha's book'The Politics of Piracy: Intellectual Property In Contemporary China', read more here.

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