Speaker: Arshia Tabrizi, Managing Partner
Tabrizi Law Office
This covers the basics of IP law but also helps you approach IP in a strategic way and examine how it fits with your overall business model. We use some real-world examples, particularly in the IT/Web 2.0 space, where IP issues arise and discuss how to address them effectively.
Part of the CIBC Presents Entrepreneurship 101 Lecture Series: http://www.marsdd.com/etn101
Bulletin - Opposing an application mark without prior rights in Vietnam, is i...KENFOX IP & Law Office
You became aware that a third party had applied to register a mark in Vietnam which is strikingly similar to yours. Although you lack prior intellectual property rights in Vietnam, you wish to prevent such a similar mark from maturing into registration and would like to know whether a Notice of Opposition can be filed in this situation. The question on the availability of the right to oppose the registration of an Application Mark is critical for IPR holders, particularly those seeking to file a trademark opposition but lacking prior rights. The answer is yes, but only where appropriate
Speaker: Arshia Tabrizi, Managing Partner
Tabrizi Law Office
This covers the basics of IP law but also helps you approach IP in a strategic way and examine how it fits with your overall business model. We use some real-world examples, particularly in the IT/Web 2.0 space, where IP issues arise and discuss how to address them effectively.
Part of the CIBC Presents Entrepreneurship 101 Lecture Series: http://www.marsdd.com/etn101
Bulletin - Opposing an application mark without prior rights in Vietnam, is i...KENFOX IP & Law Office
You became aware that a third party had applied to register a mark in Vietnam which is strikingly similar to yours. Although you lack prior intellectual property rights in Vietnam, you wish to prevent such a similar mark from maturing into registration and would like to know whether a Notice of Opposition can be filed in this situation. The question on the availability of the right to oppose the registration of an Application Mark is critical for IPR holders, particularly those seeking to file a trademark opposition but lacking prior rights. The answer is yes, but only where appropriate
8 Important Tips In Mind From A Recent Cybersquatting Case in Vietnam.pdfKENFOX IP & Law Office
OSRAM GmbH (“the plaintiff”) is a worldwide lighting manufacturer with headquarters in Munich, Germany. The plaintiff is the proprietor of a Vietnam-protected series of OSRAM trademarks for lighting apparatus, particularly electric lamps and luminaires; parts of the aforementioned items; light-emitting diode lamp modules.
The plaintiff discovered that the disputed domain names <osram.com.vn> and osram.vn> (“Disputed Domain Names”) were registered in 2014 by a natural person in Vietnam, N.D.T. ("the defendant") and resolved to the defendant's active websites. The websites under the Disputed Domain Names promoted and offered for sale the plaintiff's "OSRAM"-branded products.
The plaintiff detected that two ccTLD <osram.com.vn> and <osram.vn> (“Disputed Domain Names”) were registered in 2014 by a natural person in Vietnam, N.D.T (“the defendant”) and were resolved to the defendant’s active websites. The websites under the Disputed Domain Names were promoting and offering for sale of the plaintiff’s products bearing the “OSRAM” mark.
In support of infringement allegation, the plaintiff filed a request to the Vietnam Intellectual Property Research Institute (“VIPRI”) for obtaining the assessment conclusion on trademark infringement who was then issued in favour of the plaintiff. The plaintiff also proceeded with documenting the evidence of infringement under a Bailiff office.
IP Bulletin- what strategies to reclaim unregistered trademark rights in vietnamKENFOX IP & Law Office
Vietnam follows “first to file” principle in establishing industrial property rights, whereby industrial property rights are granted to the first filer. This principle, on one hand, encourages IPR holders to register their intangible assets at the soonest time, but on the other hand, together with a “very open” and “very free” regime on "the right to register a mark" without imposing certain conditions like many countries in the world triggers rampant "trademark squatting" in Vietnam.
Domain names and cybersquatting as deadly threats to trade marks in nigeria (2)Joseph Onele
Although the process for registering domain names is a separate one from trademark registration, many countries have reached the conclusion that there is a strong need to take precautionary measures to prevent conflicts between trademarks and use of domain names. Nigeria has, with the recent passing of the Cybercrimes (Prohibition, Prevention, Etc) Act 2015 joined the moving train in adapting its trademarks protection framework to the exigent demands of participating in the network of computers on the World Wide Web. This paper examines the concept of trademark infringement, cybersquatting and the use of domain names, as well as considers the appropriateness of an action for trademark infringement or passing off in the event of a dispute arising from use of domain names.
Cambodia is an emerging market that attracts substantial foreign investment in Southeast Asia. Every year, tens of thousands of trademark applications are filed directly in Cambodia or through the Madrid system, and millions of registered trademarks have been published in the national register. Therefore, securing a trademark registration in Cambodia is not a simple course of action, because it is very easy for a mark to be deemed confusingly similar to an earlier mark, not to mention the fact that many trademark applications may be rigidly refused by the examiner. Then, without the support of IP attorneys with extensive practical expertise in responding to the Cambodian IP Office’s refusal, business owners will not be able to enter the market, simply because their trademark has been refused protection.
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8 Important Tips In Mind From A Recent Cybersquatting Case in Vietnam.pdfKENFOX IP & Law Office
OSRAM GmbH (“the plaintiff”) is a worldwide lighting manufacturer with headquarters in Munich, Germany. The plaintiff is the proprietor of a Vietnam-protected series of OSRAM trademarks for lighting apparatus, particularly electric lamps and luminaires; parts of the aforementioned items; light-emitting diode lamp modules.
The plaintiff discovered that the disputed domain names <osram.com.vn> and osram.vn> (“Disputed Domain Names”) were registered in 2014 by a natural person in Vietnam, N.D.T. ("the defendant") and resolved to the defendant's active websites. The websites under the Disputed Domain Names promoted and offered for sale the plaintiff's "OSRAM"-branded products.
The plaintiff detected that two ccTLD <osram.com.vn> and <osram.vn> (“Disputed Domain Names”) were registered in 2014 by a natural person in Vietnam, N.D.T (“the defendant”) and were resolved to the defendant’s active websites. The websites under the Disputed Domain Names were promoting and offering for sale of the plaintiff’s products bearing the “OSRAM” mark.
In support of infringement allegation, the plaintiff filed a request to the Vietnam Intellectual Property Research Institute (“VIPRI”) for obtaining the assessment conclusion on trademark infringement who was then issued in favour of the plaintiff. The plaintiff also proceeded with documenting the evidence of infringement under a Bailiff office.
IP Bulletin- what strategies to reclaim unregistered trademark rights in vietnamKENFOX IP & Law Office
Vietnam follows “first to file” principle in establishing industrial property rights, whereby industrial property rights are granted to the first filer. This principle, on one hand, encourages IPR holders to register their intangible assets at the soonest time, but on the other hand, together with a “very open” and “very free” regime on "the right to register a mark" without imposing certain conditions like many countries in the world triggers rampant "trademark squatting" in Vietnam.
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Ideas and designs are the lifeblood of creative businesses and infringement can be particularly costly and damaging. This guide will explain what simple steps SMEs can take to best prevent infringement from Chinese competitors and potential business partners.
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HD Update 7- Focus on Domain Name Protection
1. www.china-iprhelpdesk.eu
Issue 7 - Focus on Domain Name Protection
Helpdesk News About Domain Names in China Case Study
Newest E-learning module on Learn about why domain names Learn what you can do if you
patents now available on the web are so important to your business find out that another person has
portal and how you can protect them registered for your domain name
from cybersquatters
Helpdesk News
The Patents E-learning module, the third in a series of E-learning modules from the Helpdesk is now available here.
Written by Helpdesk experts, the 30-minute online training assists SMEs in learning about the three different types
of patents in China, understanding the registration procedure and gaining practical information on the enforcement
process.
Click here to enter the Patents E-learning module
About Domain Names in China
1. Why is domain name protection so important? name registrations under the Chinese top level domain
Companies operating in China face an increasing .cn and the new top level domain name .中国, which
number of online threats which may not only lead to means .china.
consumer confusion or lost web traffic but it could
also result in lost E-mails, lost business, and in some 4. How can I apply for .cn and .中国 domain
cases, lawsuits from consumers against (genuine) IPR names?
holders. As a foreign company, you may register for a .cn
domain name only if you have majority ownership of a
2. W h a t a r e t h e r i s k s o f d o m a i n n a m e Chinese subsidiary. However, your Chinese subsidiary
infringement? must be the registrant and the contact person must be
In recent years, monetisation of domain names has a Chinese national.
become quite common. This is registering domain
names with misspellings or typos of famous brands. If On 28 April 2010, the China Internet Network
an Internet user mistypes the URL - i.e., www.euroap. Information Centre (CNNIC) announced that the .中
eu instead of www.europa.eu, the user reaches the 国 (or .china) domain names were officially ready for
website of www.euroap.eu, where the domainer can use. While government-related organisations were
place a number of sponsored links. If the Internet automatically given the Chinese character equivalent
user then clicks on one of those exposed links, the domain name of their existing .cn domain names,
registrant of the domain name receives a portion registration requirements for brand new .china domain
of the advertising revenue. Monetisation of domain names have yet to be announced. However, it is
names is a key factor in the rapid growth of domain expected that the requirements will be the same as
name registrations globally and in China. that of .cn domain names.
3. How can I protect my IP assets online and It is still possible for foreign companies to register
mitigate these risks? the .cn domain name using a European registrar, as
Domain name disputes and other IPR lawsuits in long as your Chinese subsidiary is the registrant. If
China can often be a costly and time-consuming you do not have a Chinese subsidiary, you may want
process. Therefore, it is strongly recommended that to consider using a trustee or ‘local presence’ service
you proactively protect your company name, product such as a Chinese law firm to register Chinese domain
names, services and trademarks through domain names on your behalf.
If you have an IPR issue, or any questions about IPR in China, please contact: enquiries@china-iprhelpdesk.eu
2. 5. If I find that the domain name I want is already registered, what can I do?
CNNIC has implemented a domain name dispute policy, which costs approximately RMB 4,000 to pursue, exclusive
of attorney fees. It is strongly recommended you seek guidance from IP law firms with expertise in domain name
disputes. To recover an infringing domain name, you must prove a prior right to a domain name. The main criteria
are:
• The disputed domain name is identical to or confusingly similar to your brand name or mark
• The disputed domain name holder has no right or legitimate interest in the domain name
• The disputed domain name has been registered in bad faith
A domain name dispute must be carried out within two years after the initial registration of the domain name.
After this period, you must go through the legal system, which can be a timely and costly affair. You may apply
for arbitration with the China International Economic and Trade Arbitration Commission (CIETAC) in Beijing or at
the Hong Kong International Arbitration Centre. Many European SMEs have been known to favour the Hong Kong
International Arbitration Centre due to its extensive experience in dealing with foreign company arbitrations.
Case Study
Background
TC is a Danish company with a staff of approximately 100 people. It is a trading company that primarily covers the
demand for automotive spare part systems in car trade. TC is quite active in China, although it does not have a
Chinese subsidiary.
In 2009, TC discovered that someone had registered the domain name TC.cn in 2007, which is a domain name the
SME was hoping to use for future activities in China.
Action Taken
TC immediately contacted a law firm who helped them file a domain name dispute at the Hong Kong International
Arbitration Centre within the two year time frame required for a domain name dispute case. The law firm prepared
for the case by investigating the background of the registrant of the domain name.
TC and the law firm built up their case by noting that TC.cn infringed on TC’s registered trademark. In addition,
the TC name was already quite well-known within the industry, which means the domain name registrant should
have known about the existing trademark before registering the domain name. They also argued that the domain
name registrant had actually applied for trademark registrations of at least four other existing European companies,
strongly suggesting that they acted in bad faith.
Additionally, the TC.cn domain name had yet to be used by the registrant, which suggested that the registrant had
no legitimate interest in the domain name.
Outcome
The arbitration panel ruled in favour of TC, determining that the domain name registrant had registered the TC.cn
domain name in bad faith. TC waited to see if the bad faith registrant would appeal the case but they did not. TC has
since then engaged the same law firm to facilitate the transfer of the domain name to the rightful owner.
IP Lessons Learned
• Register your company name, trademark, brands and product names as domain names in both Latin and Chinese
characters right away, even if your company is not operating in China yet but plan to.
• If your company wins a domain name dispute case, be sure to follow up and arrange for a domain name transfers
to your company right away.
• China no longer allows foreign companies to register for .cn domain names unless you have a local presence in
China. Even if you do not have a local presence yet, you may register for a .cn domain name by entering trustee
agreements. You should strongly consider this option to prevent others from registering the domain names you
may want eventually before you.
For infomation on all Helpdesk features and events, visit www.china-iprhelpdesk.eu