HOW TO PROTECT MARKS IN ASIA, and The IMPACT OF ASEAN ...€¦ · B. Increased statutory damages Statutory damages Increase in statutory damages where actual damages cannot be calculated

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© Rodyk & Davidson LLP 2015

HOW TO PROTECT MARKS IN ASIA, and

The IMPACT OF ASEAN COUNTRIES

JOINING THE MADRID PROTOCOL ON

TRADEMARK STRATEGIES

IP WEEK (2015)

> YEW WOON CHOOI

Partner

Intellectual Property and Technology

RODYK & DAVIDSON LLP

26 August 2015

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> Protection is territorial

> Different countries have different laws - some harmonisation of laws due to

international treaties

All this leads to different registration certificates for different

countries, different renewal dates etc!

IS THE MADRID PROTOCOL THE SOLUTION?

INTELLECTUAL PROPERTY – TERRITORIAL PROTECTION

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Different stages of development!

ASEAN COUNTRIES AND MEMBERSHIP IN MADRID PROTOCOL

Member

Brunei

Cambodia √

Laos

Indonesia

Malaysia

Myanmar

Philippines √

Singapore √

Thailand

Vietnam √

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> Need to register locally in countries which are not parties to

Madrid Protocol - Brunei, Indonesia, Laos, Malaysia, Myanmar,

Thailand

> Systems in ASEAN are very different

- Singapore, Malaysia and Brunei are similar

- Brunei uses the 7th edition of the International Classification

system

- Cambodia and Philippines require filing of declarations of use

- Myanmar does not even have registration regime yet

> Unregistered trade marks are generally not protected in ASEAN

countries except for Singapore, Malaysia, Brunei and Myanmar

NATIONAL REGISTRATION OF TRADE MARKS

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> Thailand and Vietnam – official fees depend on number of items

in specification

> Formalities are difficult

- Separate powers of attorney for each country

- Some countries require notarisation e.g.Thailand

- Some countries require legalisation e.g. Myanmar

> Local counsel has to be appointed throughout the registration

process

NATIONAL REGISTRATION OF TRADE MARKS (cont’d)

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> More than 100 countries are members

> Streamlines application process

> Fee estimation is much simpler – number of items do not affect

official fees

> By filing one International Application – can designate as many

countries as you like but fees are payable for every country

MADRID PROTOCOL

Leads to the buffet syndrome!

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> International Registration system of trade marks

- “Registration” does not mean availability of protection

> Each country has 18 months from date of filing to raise objections

against offering protection

> Protection is given if no objection is raised

> If objection is raised , need to overcome objection

> Local laws apply to the application

MADRID PROTOCOL

Often neglected because of pressure to keep costs low

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> Basic application must be filed before filing an International

Application

> Persons domiciled in contracting state or entities with a real and

effective industrial or commercial establishment in a contracting

state can file (i.e. applicants do not have to be incorporated /

citizens of a contracting state)

> Companies incorporated in countries such as Taiwan with a

connection to member countries can file Madrid Protocol

applications

MADRID PROTOCOL

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> Failure to check local laws can result in protection being

rejected

- Some countries have very peculiar laws, for example,

Vietnam does not allow registration of non-Roman alphabet

marks e.g. Chinese words, unless the mark has been used

in Vietnam

- Registration of a mark in black and white – some countries

do not provide protection for use of marks in all colours

- When new countries join, it may not be possible to

designate the new country in an existing Madrid

Registration

- Peculiar post-registration requirements e.g. Declaration of

Use

- Laws relating to certification/collective trade marks

BE AWARE OF PITFALLS

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- Certain symbols may not be registrable e.g. special

emblems relating to royal family

- Special symbols protected by the Geneva Convention Act -

degree to which the ASEAN countries enforce the

prohibition under the Geneva Convention varies

BE AWARE OF PITFALLS

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Often overlooked - Importance to consult

local counsel prior to filing application

through Madrid Protocol

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THANK YOU

YEW WOON CHOOI

PartnerDID : +65 6885 3609

Email : [email protected]

RODYK & DAVIDSON LLP80 Raffles Place

#33-00 UOB Plaza 1

Singapore 048624

Tel +65 6225 2626

Fax +65 6225 1838

Email [email protected]

www.rodyk.com

The contents of this presentation are not

meant to be legal or professional advice.

Rodyk & Davidson LLP does not accept

any responsibility for any loss or damage

arising out of any attendee’s reliance on

the contents of this presentation. All

questions or comments on the contents

of this presentation may be directed to

the respective Partner.

Rodyk & Davidson LLP

Limited Liability Partnership Registration

No. LL0700439L

On 2 April 2007, Rodyk & Davidson

LLP was converted from a firm to limited

liability partnership.

© Allen & Overy 2015 14

China’s Trademark Law Amendment:

One Year Later

Benjamin Bai

Allen & Overy LLP, Partner

August 2015

© Allen & Overy 2015

Summary of Thoughts

A. Limited bad faith filing provision

Not sufficient to address many bad faith filings

B. Increased statutory damages

RMB 0.5 million to RMB 3 million

C. Largest TM infringement award

Zhou Lelun v. New Balance – USD 15.3 million

D. OEM Confusion


A. Limited bad faith filing provision

Combatting Bad FaithGeneral principle of good faith introduced

• All trademarks shall be registered and used in accordance with the

principle of honesty and integrity

Improved protection for trademark piracy

• An application for a trademark will be rejected if the applicant, through

a business or contractual or any other relationship with brand owner,

knew of the existence of the prior mark

Not enough to address many bad faith filings!!!

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B. Increased statutory damages

Statutory damages

Increase in statutory damages where actual damages cannot be calculated

increased to a maximum of RMB 3,000,000 from 500,000 RMB.

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Other amendments regarding damages

– Willful infringement and serious circumstances – damages increased 2 to 3 fold

– Courts can order infringers to provide financial information - failure results in

damages being determined by evidence from plaintiffs


– In 21 April 2015, the Guangzhou Intermediate Court ordered the Chinese

affiliate of New Balance Athletic Shoe Inc. to pay RMB 98 million (USD

15.3 million) to a local shoes businessman for trademark infringement.

– Plaintiff: Zhou Lelun (周乐伦), registrant of “Xin Bai Lun”(“新百伦”) and

“Bai Lun”(“百伦”) trademarks

– Defendant: New Balance Trading (China) Co., Ltd

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C. Largest TM infringement award —Zhou Lelun v. New Balance


Zhou Lelun v. New Balance

The alleged period of infringement was July 2011 to November 2013, which was

before the amended trademark law. Therefore, the pre-amendment trademark law

applied to this case.

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1 May 2014

PPE-

AMENDMENT

LAW

Infringement

1 May 2014

AMENDED

LAW

Infringement



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1994.8 Plaintiff (周乐伦) applied to register the “Bai Lun” 百伦 mark with CTMO.

2003 Defendant began used “Xin Bai Lun” 新百伦.

2004.6 Plaintiff applied to register the “Xin Bai Lun” 新百伦 mark from CTMO.

2007.12 Defendant opposed registration of “Xin Bai Lun” 新百伦 but failed.

2011.7 Plaintiff was granted the “Xin Bai Lun” 新百伦 mark by CTMO.

2013.11 Plaintiff sued Defendant for infringement of “Xin Bai Lun” 新百伦 .

Timeline

1996.8 Plaintiff was granted the “Bai Lun” 百伦 mark by CTMO.



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Use of Trademark

New Balance used 新百伦 (Xin Bai Lun) as a mark in online and other

advertisements, on invoices and other commercial activities.



Use of Trademark

New Balance sport shoes was the first to pop up on Chinese e-commerce

websites such as Taobao, if the users searched the words— “新百伦” or “百伦”

on those websites.

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Damages Calculation—Evidence

Plaintiff moved for preservation of evidence regarding financial

information of Defendant’s during the alleged infringing period.

The court granted the motion and ordered Defendant to provide

related financial information, such as annual financial report and

audit report.

The income statements provided by Defendant indicated that

the total profits from July 2011 to November 2013 were RMB

195.8 million.



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1. As the pre-amendment Trademark Law

applied, the plaintiff asked the court to

calculate the compensation according to the

defendant’s profits during the alleged

infringing period.

2. The total profits of the defendant from

July 2011 to November 2013 were RMB

195.8 million.

3. However the defendant did not directly

use “Xin Bai Lun” mark on its products as

trademark, such as printing on its shoes or

the packaging. And the defendant only used

the trademark in advertisements.

The court took these factors into consideration

and decided that half of the total profits, RMB

98 million, should be paid to the plaintiff as

compensation.

Damages Calculation



Reverse ConfusionReverse confusion is that infringer enjoys much higher visibility and

awareness in the market than the trademark owner.

If such conduct is not prohibited, it would give powerful companies the

ability to ignore trademark rights and lead to predatory market behaviour.

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It was one of the reasons the court awarded the plaintiff such high

amount of compensation—RMB 98 million (USD 15.3 million).

High Awareness


D. OEM Confusion

OEM USE

• “Use” defined as “affixing marks to commodities, packages or containers, documents

or in advertising or commercial activities to distinguish origin of goods or services”

• Debate remains unsettled without explicit reference to OEM being “USE”

– Mixed case law:

• A&A v Crocodile - OEM WAS NOT considered 'use' in the infringement context

• Shanghai Shenda Audio Electronics v Jiulide Electronics - ditto

• Nokia v Wuxi Jinyue - OEM WAS considered 'use' in the infringement context

• Muji (Ryohin Keikaku Co., Ltd. v. TRAB)- OEM cannot be relied upon in the opposition

context

• The Polo/Lauren company v Mawei Trade Company - manufacturing was considered 'use' in

the infringement context.

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A&A v. CROCODILE (2011)

• Manufacture of 3,500 pairs of jeans for export to South Korea

• Branded with crocodile logo - owned by Singapore-based Crocodile International Pte. Ltd – shipping to South Korea

• Hong Kong Crocodile Garments Co. Ltd. – legal rights holder of Crocodile registered trademark in China took action

• Court found

– production of jeans not regarded as trademark "use"

– trademark was legally authorised by Singapore Crocodile for export

– OEM not considered 'use' in the infringement context

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Shanghai Shenda Audio Electronics V. Jiulide Electronics (2009)

Manufacture of electrical products for export

Trademark registered in China by a third party

Found

– basic function of trademark - to distinguish origin of goods or services

– goods to be exported - no likelihood of confusion by public in China

Use

– only use by marketing to Chinese consumers was taken into account

– OEM not considered 'use' in the infringement context

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Nokia v Wuxi Jinyue (2011)

• Wuxi manufactured LCD television casings for export

• LCD television casings branded with "Nokia Egypt"

• "NOKIA" registered in China

– Court found

– Wuxi infringed Nokia's trademark

– OEM was considered 'use' in the infringement context

• Note

– "NOKIA" brand was a well-known trademark in China and Nokia had a registration in Egypt

– Other cases did not involve well-known trade marks in China

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Ryohin Keikaku Co., Ltd. v. TRAB (MUJI) (2012)

– Pirate mark registered its Chinese mark in a different class (24)

– Muji's OEM use did not constitute "prior use"

– Court did not explicitly deny that OEM can constitute use in the

opposition context BUT

– The message seems to be that OEM cannot be relied upon in the

opposition context

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Polo/Lauren Company v. Mawei Trade Company (2014)

– Manufacture of menswear branded with "HPCPolo" for export

to Mexico

– Not strictly OEM as the registration in Mexico was arguably a

pirate mark

– Court found the Defendant liable for infringement

– Court did not explicitly mention OEM but

• manufacturing was considered 'use' in the infringement

context

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© Allen & Overy 2015 32

Questions?

These are presentation slides only. The information within these slides does not

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advice without checking the primary sources.

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HOW TO PROTECT MARKS IN ASIA, and The IMPACT OF ASEAN ...€¦ · B. Increased statutory damages Statutory damages Increase in statutory damages where actual damages cannot be calculated