Synchronicity in Trademark Applications in China: from a first-to-file to a first-to-use to a divination system

"Let's not look at the timekeeping equipment, let's draw lots"

There is a theory of synchronicity of cultural artifacts. For example pyramids being build both in Egypt and in Middle and South America around the same time, or the simultaneous creation of the cartoon figure Dennis the Menace in the US and Dennis the Menace in the UK. As if certain ideas are floating in the air at certain times. Synchronicity can happen when two people independently want to register the same trademark for use of the same or similar good or service in China and apply on the same day. So in order not to confuse the public the Chinese trademark law allows only one to register. Although China has a first-to-file system, they devised a system whereby each trademark applicant have thirty days to come up with evidence of first use. If they start using the mark on the same day or have not started using it, they have 30 days to consult each other and come with a solution by themselves. If that does not work, the Trademark Office will demand that the trademark applicants draw lots. If a trademark applicant does not participate in the drawing of a lot, he will be deemed to have abandoned his trademark application, so that there is only one applicant left. Waterproof solution. But wait, is on the same day not a very crude way to register the time of arrival? Why not put a stamp with the exact time of arrival, including seconds, of the trademark application? Then in all probability, the consultation and drawing lots fanfare will not be necessary.

Shi Xinzhang analyses for China Intellectual Property 中國知識產權 the current system and recommends to separate the requirement and examination procedures. Shi does not seem to mind the doctrinal awkwardness of a first-to-file system that turns to first-to-use, let alone drawing lots. Read here. 

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Happy Dragon Boat Festival! Unhappy Trademark Protection for Qu Yuan?

Free interpretation of
 zong zi (glutinous rice).
Traditional zong zi has a triangular form.
Photo Danny Friedmann

Today is the fifth day of the fifth month of the lunar calendar. Time for Duan Wu festival (端午节). On this day Chinese around the world commemorate the great poet Qu Yuan 屈原. Qu is not only famous for his work Chu Ci 楚辞 (58 long and 6 short poems) but also because of his act of patriotism.

Qu, who lived between 340 BCE and 278 BCE, was fed up with the corruption by the local government and in protest drowned himself. (The yoga guru Swami Ramdev was on hunger striking protesting graft, becoming a kind of modern Indian version of Qu, read more about it here.) When the local villagers found out about it, they started to paddle and play the drums to frighten the fish away from Qu's body (this started the tradition of dragon boat races), and throw rice in the water so that the fish would not eat Qu (this lead to the tradition of eating zong zi) and doctors poured liquor seasoned with realgar in the river in the hope to make the fish drunk (first people drank a bit of this poisonous wine, now some parents draw with it the character for king on the forehead of their children).

After seeing and hearing the dragon boat race, eating zong zi, there was only one thing on IP Dragon's mind: has the name Qu Yuan been registered in China? In many classes including food and beverages the name was registered, search here. Joel Martinsen wrote already in 2006 about the fact that Qu Yuan was even registered as a trademark for pig-feed, read here. And to add insult to injury, the company that registered is based in Yueyang, Hunan: the location where Qu committed suicide. This location is disputed by South-Korea who claims that the event's genesis was Korea. Read more about Dano (단오) versus Duan Wu here.

Mr Martinsen asked the question whether the State Administration for Industry and Commerce's Trademark Office that granted the registration of the trademark was too lenient.
Article 10 Trademark Law: "The following signs shall not be used as trademarks:
(8) those detrimental to socialist morality or customs, or having other unhealthy influences.

So the registrar could invoke this provision to reject the registration. It is my opinion that article 10 (1): Trademark Law: "those identical with or similar to the State name, national flag, national emblem, military flag or decorations of the People's Republic of China, and those identical with the name of the particular place, or with the name or image of the symbolic building, where a central government department of the State is located" should be extended to include "or national historical figures", such as Qu Yuan.

In a way Qu Yuan lives on because of the well established traditions of dragon boat races and eating zongzi. Does the prosaic use of the name of the great poet for food, beverage dilute or spread his reputation? That depends. One could imagine it could be enhanced if for example a wine brand would publish some of Qu's poetic phrases (that are from the pre-copyright era and have been always in the public domain) on the wine label. 

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EU Experience and Practice Must Show China The Way Concerning IPR Protection At Exhibitions

It is crucial for companies to showcase their new products to the world at trade fairs and exhibitions. Hower, these places welcome potential customers but also IPR infringers.

To make the bonafide exhibitors less vulnerable to IPR infringements and deal with the IPR infringers that also have come to the trade fairs, the IPR2 (EU-China Project on Protecting Intellectual Property Rights, 10.85 million euro provided by the EU and 5.425 million euro by China) has written a 36 page study that must show the way to the Department of Treaty and Law of the Ministry of Commerce of China on 'How to Protect Your Intellectual Property at Trade Fairs', based on the experience and practice of France, Germany, Italy, the Netherlands, Spain, Switzerland and the United Kingdom, see pdf here.

Negative peculiarities in IPR protection during exhibitions mentioned in the study are:

• Timing; because of the short period it can be hard to execute an ex parte order;
• There can be a lack of availability of experts;
• Risk of double prejudice for both the IPR owner and alleged infringer.

The study comes up with the following positive peculiarities in IPR protection during exhibitions:

• Move evidence available;
• An extra jurisdiction option;
• Deterring effect, because of the public perception of an intervention.

The study was written by:
Jean-Frédéric Gaultier (Clifford Chance, France);
Reinhardt Schuster (Bardehle Pragenberg Dost Altenburg Geissler, Germany)
Giovanni Casucci (Casucci Studio Legale, Italy) who also coordinated the study;
Montserrat Lopez-Bellosta (Clifford Chance, Spain);
Carlos Rivadulla (Clifford Chance, Spain);
Johannes Jabocus Brinkhof (Brinkhof, the Netherlands);
Philippe Azzola ( Philippe P. Azzola, Switzerland).

A condensed version of the study was provided to some 200 companies in a training run by the Ministry of Commerce at China's most important trade fair, 104th China Import and Export Fair in Guangzhou, Guangdong Province (15-19 Oct; 24-28 Oct and 2-6 Nov 2008).

The report came a year after a EU-China Seminar on the Protection of IPR at Trade Fairs in Beijing and Shenzhen in November 2007. IPR2 supported a study tour by MOFCOM officials to Paris, France; Berlin, Hannover, Germany and Milan, Italy in November 2008 to assess the methods and practices employed at several of the largest European trade fairs. Read more about the study tour here.

The Protection Measures for Intellectual Property Rights during Exhibitions of the People's Republic of China, formulated according to the Foreign Trade Law of the PR China, Patent Law of the PR China, Trademark Law of the PR China, Copyright Law of the PR China and relevant administrative regulations, however, is already in force since 2006, see here.

UPDATE: The powerpoint presentation 'Stakeholder briefing www.ipr2.org, March 6, 2009, can be seen here.

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