With over 200 dedicated professionals, Beijing East IP has helped a full spectrum of clients – from startups to Fortune 500 corporations to domestic multinational companies – on their intellectual property issues in China.
On the afternoon of April 2, 2020, Chris LIU, a lawyer from Beijing East IP Law Firm, attended the third “Online Forum of IP Topic Business Class” at the invitation of the International Licensing Industry Merchandiser’s Association and Magic Bean Up, and delivered a keynote speech titled “legal regulation and response strategies against trademark preemption”.
Chris started with the news that “Huoshenshan” and other hot words related to COVID-19 were preemptively registered, introduced the trademark registration system of China, and compared it with the “principle of emphasizing and emphasizing prior use” of the United States. Chris explained the reason for trademark preemptive registration with several examples, and on this basis, combined with legal regulations from the aspects of prosecution and dispute resolution, provided strategies and suggestions for the enterprises’ intellectual property protection for the commercial perspective.
Chris introduced a variety of damages to public and private interests caused by trademark preemptive registration, including maliciously seizing public resources, disrupting the order of trademark regulation, and causing adverse social impact; consumers confusing misunderstandings, reducing transaction volume, and causing the impact on goodwill; weakening the connection between specific marks and products/services, and increasing consumer cognitive costs; destroying brand positioning, increasing pressure to maintain customer base, resulting in derogation of brand value; affecting the business expansion of the enterprise, increasing the risk of infringement when entering new fields, and losing business opportunities, etc. The brand may face trademark preemptive registration behavior with a variety of objects, purposes and means in the entire life cycle of the brand from conception period, promotion period, stability period, expansion period to well-known period. The right holder needs to actively prevent in advance and take timely countermeasures.
The life cycle of a trademark includes many stages, such as acquisition of rights, management of rights, use of rights, ownership disputes and infringement prevention, the preventive measures and strategies against trademark preemptive registration are also contained in the trademark strategy at each stage. In the process of acquisition of rights, we should consider different types of business logos and brand importance to carry out potfolio management, avoid the market business from being affected, prepare for the layout of enterprise development in advance, and avoid obstacles to commercial development. In the process of use of rights, we should strive to expand brand awareness and expand the scope of protection against malicious preemptive registration through continuous commercial operation and brand maintenance. In the process of infringement prevention, we should monitor the application, registration and market use of malicious trademarks to prevent trouble before it happens and use administrative procedures and civil procedures to flexibly turn the tide.
After the speech, Chris and Sunny Zhang, director of brand authorization of “Wu Huang Wan Shui” brand, and Figo, founder of Magic Bean Up, exchanged views on the topic of intellectual property operation and protection. Some viewers asked how to deal with the phenomenon of Chinese excellent literary works being registered in foreign countries. Chris suggested that legal protection should be arranged in advance of commercial needs, and should be handled in a coordinated manner by means of international registration through Madrid system and separate applications in essential countries. When asked how to deal with the phenomenon that plagiarists piece together multiple IP, Chris pointed out that we should consider the perspectives of copyright, trademark, and unfair competition comprehensively, pay attention to the use of electronic evidence preservation technology, notarization, and other diversified forms to timely retain ownership and infringement evidence, take means of letter communication, administrative complaints, civil litigation, and make full use of pre-litigation injunction, evidence preservation, property preservation and other measures to handle the situation with flexibly.
Chris shared her compound experience in the fields of intellectual property prosecution and dispute resolution, fully answered the questions of viewers, and won praise from both the organizer and the audience.