Successfully reported this slideshow.
Your SlideShare is downloading. ×

Is This Relevant To Your Business's International Growth

Ad
Ad
Ad
Ad
Ad
Ad
Ad
Ad
Ad
Ad
Ad

Check these out next

1 of 12 Ad

Is This Relevant To Your Business's International Growth

Download to read offline

Trademark squatting, or bad faith Trademark filing, is essentially when a third-party files and apply for a Trademark merely to sell it for a profit later to someone who actually needs it and/or wants to use it. The original applicant then faces enormous challenges in registering in that country since the squatting party controls the intellectual property (IP) rights to that Trademark.
Visit-https://www.ippartnership.com.au/blog/trademark-squatting--is-this-relevant-to-your-business-s-international-growth-

Trademark squatting, or bad faith Trademark filing, is essentially when a third-party files and apply for a Trademark merely to sell it for a profit later to someone who actually needs it and/or wants to use it. The original applicant then faces enormous challenges in registering in that country since the squatting party controls the intellectual property (IP) rights to that Trademark.
Visit-https://www.ippartnership.com.au/blog/trademark-squatting--is-this-relevant-to-your-business-s-international-growth-

Advertisement
Advertisement

More Related Content

Recently uploaded (20)

Advertisement

Is This Relevant To Your Business's International Growth

  1. 1. Trademark Squatting: Is This Relevant To Your Business's International Growth
  2. 2. Introduction Trademark squatting, or bad faith Trademark filing, is essentially when a third-party files and apply for a Trademark merely to sell it for a profit later to someone who actually needs it and/or wants to use it. The original applicant then faces enormous challenges in registering in that country since the squatting party controls the intellectual property (IP) rights to that Trademark.
  3. 3. Trademark squatting is a serious issue in markets like China, as a result of the differences in Trademark laws in different countries. As opposed to Australia, China has a first-to-file Trademark system, which means that the first party to apply and file for a Trademark obtains the rights to that Trademark indisputably. The squatting third-party can even go one step further in enforcing their rights to the Trademark and potentially sue the original applicant in the foreign jurisdiction for infringement.
  4. 4. How Can Business Owners Prevent This? The best way to prevent any of the abovementioned squatting issues is to file in all relevant and potential business growth jurisdictions as soon as possible, particular in first- to-file countries. The first point of call would be to file your Trademark in your own home country, i.e. in Australia all Trademark registrations are managed and enforced by the government body: IP Australia. Then, you would apply for Trademark registration in your key countries of international business growth and future business expansion.
  5. 5. Given that third-party Trademark squatters are notoriously adaptable, foreign business and brand owners should stay proactive and vigilant in their efforts when it comes to opposing, invalidating and/or cancelling Trademarks based on non-use. It is suggested to conduct in-depth clearance and background searches to investigate whether the cited Trademark owner is in fact a third- party squatter or a genuine Trademark owner.
  6. 6. The Chinese Government’s Response The latest amendment, Article 4 of the Chinese Trademark Law (2019) saw that bad faith Trademark applications that are not filed for the purpose or intention of use should be refused. This empowers the original applicant to succeed in opposition or invalidation cases before the China National Intellectual Property Administration (CNIPA) or the people’s courts, based on the following: ● The existence of business relations with the Trademark applicant (Article 15); ● Prior copyright, name right or trade name; or ● Prior use of an unregistered Trademark with a certain influence (Article 32). The amendment is part of a dedicated effort by the CNIPA to function as watchdogs for Trademark squatting activities, rather than just relying on foreign business and brand owners to initiate actions. This allows the two groups to work together to combat third- party bad faith Trademark filings.
  7. 7. Cases of Recent Trademark Squatting The highly publicised legal battle between the famed American athlete, Michael Jordan, and the Chinese sportswear company, Qiaodan Sports Co Ltd, saw that the latter was using a Chinese transliteration of Michael Jordan’s name, “chee-ow dahn”, and a logo of Nike’s well-known Air Jordan symbol as registered Trademarks. The case also saw the establishment of a critical three (3)-step rule for relying on personal name rights: ● The name has acquired a high level of reputation in China; ● The relevant public refers to that natural person by the name; and ● There is a ‘stable correspondence relationship’ between the name and the natural person.
  8. 8. To summarise, business and brand owners relying on this right will have to demonstrate not only their well-known status (or a certain degree of fame), but also compelling evidence such as awards, rankings, market surveys and national library search reports to establish that the public does associate that name to the natural person. It is worth noting that the personal name right of an English name does not necessarily encompass to its Chinese counterpart or its Pinyin, and vice versa. Therefore, foreign business and brand owners are encouraged to file both its English and Chinese equivalent mark to ensure the broadest scope of protection, as third-party squatters often take advantage of multiple linguistic representations of a given brand name in their bad faith activities.
  9. 9. The key rule applies – if China may be relevant to your business or your future business growth, register your Trademark there as soon as possible. This is also the recommendation of the Counsellor (Intellectual Property), David Bennett at the Australian embassy in Beijing. If a third-party has already registered ‘your’ Trademark(s) or Trademark(s) that are similar to your Trademark(s), different options exist to try to remove or invalidate those registrations. However, time limits apply so you need to act fast! Key Takeaway for Business and Brand Owners
  10. 10. If your organisation produces products with those types of distinctive names, you should consider apply for a trademark for them. A registered trademark for your items provides further protection against imitators and counterfeiters, as well as ensures that your product name is only linked with your company. Here are a few more things to think about while registering trademarks for product names.
  11. 11. Apply the same level of vigilance to your product's trademark as you do to your business's Infringement of product trademarks is equally as common as an infringement of corporate trademarks. Also keep in mind that possible infringers may use your product's name as their company's name, and vice versa. This is still trademark infringement, as is any situation in which a consumer can be mistaken about the source of goods or services. There are no distinctions between product-level trademarks and company-level trademarks; they are all concerned with eliminating customer confusion and safeguarding legitimate trademark owners.
  12. 12. Trademark law is the best area of IP law that offers protection, strategy, and leverage. Here at IP Partnership trademarking lawyers,our team of solicitors are experts in Trademark registrations in both Australia and internationally, and we also assist clients with Trademark oppositions and the removal of Trademarks. Please see contact us to discuss further. Final Words…

×