global trademark protection
Recent Changes to Trademark Law in China
It has long been a complaint of companies doing business, or wanting to do business, in China that Chinese trademark law does not do enough to protect the rights of brand owners.
Legislative amendments were recently passed in China that are intended to strengthen protection for brand owners, discourage trademark infringement and unfair competition, extend protection to non-traditional marks, and streamline registration and opposition processes.
Highlights of the changes that will come into effect on May 1, 2014, are as follows:
1) Harsher Penalties for Infringers
Infringers will face increased fines based on revenue from the illegal use of a trademark. Repeat infringers will face heavier fines.
Maximum statutory damages have also been increased from 500,000 yuan (approximately C$84,000) to 3,000,000 yuan (approximately C$500,000). The maximum compensation can be tripled if it is determined that the infringement was committed in bad faith. The definition of “bad faith” must still be clarified.
Another welcome change is that infringing companies can be forced to disclose sales records for the assessment of damages. If the infringer refuses, damages can be awarded based on the claims of the trademark owner.
2) Good Faith Provisions
The new law contains a provision that trademark applications must be used and registered in good faith.
The amendments provide a means for trademark owners to oppose the registration of identical or similar marks by distributors, manufacturers, or others with whom they have a prior relationship.
The new law also places obligations on trademark agents to act in good faith, e.g. by not handling a trademark application when the agent is aware that the client is acting in bad faith or infringing another party’s rights.
3) Multiclass applications are permitted
Applicants will no longer need to file separate applications for each international class of goods and services. We are hopeful that this will mean reduced costs for our clients who have goods and services in a variety of classes.
4) Trademark Examination Timelines
Timelines have been set out to shorten the registration process. Under the new law, the timeline for the initial examination of an application is nine months.
5) More Limited Right to Oppose
Oppositions based on relative grounds, including confusion with a prior right, may only be filed by the owner of the pre-existing right or an interested party. Prior to the changes, anyone could oppose on relative grounds.
6) Removal of the Opponent’s Right to Appeal Registration
If the opposition is decided in favour of the applicant, the mark will proceed directly to registration with no opportunity for the opponent to appeal. The opponent may file an invalidation action post-registration. However, the opponent would be at risk of infringing the applicant’s trademark until a decision to invalidate the registration is rendered.
This change was presumably meant to restrict vexatious oppositions, but has been criticized for ostensibly favouring bad faith applicants. As a result of this change, opponents will need to place greater emphasis on putting their best case forward at the opposition stage.
7) Registration of Sound Marks
Under the new law, sound marks are now eligible for registration.
8) Well-known Trademarks
The amendments clarify how and when a trademark will be recognized by authorities as a well-known trademark and prohibits the use of the term “well-known trademark” on products, packaging and advertising.
Overall, the changes appear to move China’s trademark law in the right direction, although the full impact of the law will depend on how it is applied in practice.
Proper Trademark Usage – Part 1
Marking: What Those Symbols Mean and When to Use Them
Trademark marking refers to the use of symbols or other designations to indicate trademark rights. We have all seen symbols such as ™ and ® on products and advertising, but what is not always clear is the distinctions between them, and when they should and should not be used.
1) Types of Designations
The following are examples of symbols often seen in Canada:
|MC||Marque de commerce|
- TM (Trademark)
May refer to a registered or unregistered trademark, whether or not an application has been filed.
- MC (Marque de commerce)
French language equivalent of the ™ symbol. Commonly used in Québec. May refer to a registered or unregistered trademark, whether or not an application has been filed.
For packaging and advertising that is used in English and French speaking markets, it is not uncommon to see both English and French symbols, e.g. ABCTM/MC
- SM (Service Mark)
More common in the United States. May refer to a registered or unregistered trademark used with services, whether or not an application has been filed.
- ® (Registered Trademark)
Should only be used after a mark has registered, and only in relation to goods and services covered by the registration.
- MD (Marque Déposée)
French language equivalent of the ® symbol. Commonly used in Québec. Should only be used after a mark has registered, and only in relation to goods and services covered by the registration.
The above symbols should appear immediately following the trademark. Trademark rights can also be designated in footnotes or ownership legends, e.g.
ABC is a registered trademark of ABC Inc.
This is often preferred when the above symbols would be considered cumbersome or aesthetically displeasing.
2) What are the Canadian Requirements With Respect to Trademark Marking?
Simply put, the use of trademark symbols is not compulsory in Canada. The Trade-marks Act does not contain any requirements with respect to trademark marking. There is currently no legal obligation to use the above symbols, nor any legal repercussions for misusing them in Canada. That said, the above-mentioned trademark symbols are widely recognized in practice in Canada, and making proper use of them is advisable, for the reasons stated below.
3) Purpose of Trademark Marking
• Alerts the public to your trademark rights – puts third parties who may be considering adopting the same or similar marks on notice. In addition to serving as a deterrent to potential infringers, this public notice will, in some countries, entitle the mark owner to additional remedies in litigation.
• Shows that mark is not being used generically
• Set trademark content apart from surrounding text or graphic elements – This is useful when a mark is used in close proximity to other elements, to clearly identify the subject matter covered by a trademark.
4) International Considerations
Although Canada has no marking requirements, brand owners who do business in other countries need to be aware that marking laws will vary by country.
Some countries require that trademarks be properly identified as registered in order to be entitled to certain legal remedies. For example, in the United States, failure to give notice of the registered status of a trademark may limit the ability to recover damages and profits in an infringement suit.
Further, in some countries, false or misleading marking can result in claims of unfair competition, fines, and even imprisonment.
In the United States, improper use of the federal registration symbol ® that is deliberate and intended to deceive or mislead the public is fraud (TMEP §906.04). Thus, if a business is using the same marketing collateral in both Canada and the United States, but only has a trademark registered in Canada, the safest approach is to use the ™ symbol until such time as the mark has registered in the United States.
Although the ® is commonly used around the world, other symbols may be more appropriate in certain regions. For example, M.R. (“Marca Registrada”) is used in many Spanish and Portuguese speaking nations.
Because of these international differences, advertising and packaging may need to be customized to comply with local marking requirements. Since websites may be accessed from anywhere in the world, it may be advisable to have regional websites with a marking strategy tailored for each country.
It is best to consult with your Trademark Agent if you have questions concerning marking requirements in specific countries.
The Trademark Clearinghouse – What Brand Owners Need to Know
In anticipation of the new generic top-level domains, the Trademark Clearinghouse is designed to provide some protection for holders of registered trademarks.
The current Internet Domain Name System features just 22 generic top-level domain names (gTLDs), including .com, .net., .org, and .biz. In 2012, the international body that oversees the use of Internet domains, known as ICANN, began accepting applications to register new gTLDs.
According to ICANN, nearly 2,000 applications to register new gTLDs were received during the application window. Examples of the applied-for gTLD strings are .amex, .book, .fashion, and .google (for a full list, click here). ICANN expects the first new gTLDs to be delegated as early as April 23, 2013.
The launch of the new gTLDs is expected to bring with it an increase in cybersquatting and trademark infringement.
What is the Trademark Clearinghouse?
The Trademark Clearinghouse is a central database of validated trademarks designed to help protect the rights of brand owners within the new gTLD program.
For a fee, trademark holders may submit their trademark(s) for validation directly with the Clearinghouse, or have a Trademark Agent do so on their behalf.
What are the Benefits?
All new gTLD registries will be required to interface with the Trademark Clearinghouse. This means that once your trademark is submitted to and validated by the Clearinghouse, you will not need to monitor the launch of each new gTLD or register in multiple databases to access the following services:
i) Sunrise Service – gives you priority access to register a domain name that matches your trademark for all new gTLDs as they are launched, before domain names are offered to the general public.
ii) Trademark Claims Service – potential domain name registrants will receive a warning notice if their chosen domain name matches your trademark. If they proceed with the registration, you will be notified. This does not stop others from registering your trademark as a domain, but may alert you to potential infringers so that you can take any appropriate action.
When Should You Register?
There is no deadline per se. The Trademark Clearinghouse opened for registrations on March 26, 2013. As the date of the first sunrise period has not yet been confirmed, you still have time to take full advantage of the Clearinghouse.
Now is a good time to review your trademark portfolio, update any ownership information, compile evidence of use, etc.
What if you don’t have a registered trademark but want to take part in the Clearinghouse?
While there are exceptions, unregistered trademarks are not generally eligible for the Trademark Clearinghouse. If you have not done so already, you should speak to a Trademark Agent about filing applications to register your important marks.
Even if you don’t ultimately record your mark with the Trademark Clearinghouse, a trademark registration carries a myriad of benefits. Should you require information on the trademark registration process, please contact one of our Registered Trademark Agents.
Why Do Successful Companies Choose Coastal Trademark Services?
We often get asked why companies choose Coastal for trademark registration and trademark services. Although we know that our personalized service is one of our hallmarks, we also pride ourselves on being recognized locally and internationally for our expertise in trademark registration and trademark enforcement. Here are just some of the reasons why successful companies choose Coastal for their trademark services:
1) Friendly, personal trademark service
Whether you are a multinational company with a sizable trademark portfolio, or a small business seeking brand protection for the first time, your business is important to us. We work closely with each of our clients to craft a trademark registration strategy that makes sense for their specific business needs. In our communications, we endeavour to strip away the ‘legalese’ and explain the trademark registration process in a way that is easy for either the experienced or novice trademark owner to understand. We like to get to know our clients and business partners. While email has become the standard mode of communication for most businesses, we recognize that a phone call or a face-to-face meeting is often the best way for us to truly understand one another.
2) Expertise – Our business is trademarks
Successful companies realize the importance of having the right person for the right job. By specializing in trademarks, we have the expertise necessary to advise you and guide you through the trademark registration process. At Coastal, we do not view trademark protection as an afterthought, but rather as an integral part of a company’s business plan. Trademarks are important business assets; we help our clients protect their value through strategic trademark registrations and effective trademark enforcement.
3) Practical, valuable trademark advice
Successful companies recognize that the value of good advice outweighs the cost savings of a do-it-yourself approach to trademark registration. We are equipped to advise clients of potential issues and risks that may be encountered before a trademark is used or an application is filed, so that valuable resources are not wasted developing and marketing a brand that may run into trademark registration or legal issues. Similarly, by ensuring that our clients’ trademark filings are done properly from the start, our clients are not wasting money on trademark registrations that don’t adequately protect their brand, or that will end up being unenforceable because of technical errors. We provide personalized, relevant advice on everything from trademark selection, clearance and use, to trademark registration, enforcement and licensing, to ensure our clients’ trademark rights are well-protected.
4) Reasonable cost for trademark registrations
At Coastal, we recognize that businesses both large and small must keep to a strict budget to remain viable. We work with our clients to develop an appropriate trademark registration strategy for their budget. We believe in straightforward billing practices to avoid surprises and “hidden fees”. Wherever possible, flat fees are quoted up front. Because of the nature of our business, we are able to offer trademark registration fees and rates that are lower than the average law firm. In cases where fees are billed on an hourly basis, our hourly rates are lower than most lawyers’ rates, resulting in significant cost savings compared to law firms. If you would like a quote for a trademark registration or other trademark services, please fill out our quote request form and one of our agents will get back to you within 24 hours.
5) Efficient trademark services
We understand that brand owners are busy and often on a tight schedule. Our streamlined business systems allow us to provide efficient service, while maintaining exceptional service standards. We aim to file applications for trademark registration within 24 hours of receiving full instructions from the client. We also monitor deadlines and take care of all communications with the Trademarks Offices so that our clients can focus on their day to day business.
6) Global trademark protection
We offer worldwide trademark representation. Through our years of operation, we have developed a network of trusted trademark professionals around the world who share our values. Because of our international relationships, we are able to effectively manage international trademark portfolios of any size. Our global services include obtaining trademark registrations, as well as negotiating international co-existence agreements and coordinating global enforcement efforts.
7) Multiple Trademark Agents
The Coastal Trademark Services team includes four registered trademark agents, each 100% dedicated to trademark work, along with experienced support professionals. Our collaborative team structure allows us to provide personal service, while also ensuring that there is always an experienced trademark agent available to answer your questions. We would be pleased to show you why so many great companies choose Coastal Trademark Services for the trademark needs.