Three ways of legal reminders to prevent trademark

2022-08-08
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Legal reminder: three ways to prevent trademark preemption

from a nationwide outcry to an ambiguous joint statement, the trademark dispute of "Hisense VC Siemens" ended in half a month, leaving no detailed experience for reference. So, what should other enterprises that also face the risk of "being preempted"? Spend the right money and do the right things, which is the essence of trademark anti preemption

· the first form of anti preemptive note · - discerning eyes recognize thieves

there is often such a saying in the story that a businessman and his companions are walking on the road. Between the eyes of autumn, the businessman feels that there is danger ahead and asks to stop and rest. His companions insisted on not going far, but they were robbed by robbers. Therefore, the merchant said to his companion, "as the saying goes, 'there is no farmer on a hill, there is a thief's business'. There must be too many robbers nearby on a good hillside without farmers and herders. This is business experience." Is there any experience of "anti preemptive injection"? According to lawyer Li Yongbo of Beijing Unitalen Intellectual Property Agency Co., Ltd., the answer is yes. Experience 1: be alert to those who require exclusive agency. In order to obtain the monopoly interests of Chinese products in their own markets, some overseas businessmen often ask for exclusive agency rights. Once rejected, they will register Chinese products in their own countries in their own names, use trademark rights to destroy the product market of Chinese enterprises in their regions, or prevent others from acting for Chinese products. For example, the trademark "Peony" of China's "Peony" TV set has been registered by Dutch sales agents in the Netherlands, Sweden, Norway, Belgium and Luxembourg. Experience 2: be alert to those who know the product market in detail at the exhibition. When enterprises participate in the exhibition, if they find someone who knows the product market in detail, but has no intention of cooperation, they should pay attention to it. This person may be a trademark registrant. In recent years, speculators in Southeast Asia, South Korea and Japan have repeatedly used the negligence of Chinese enterprises when participating in exhibitions to grasp the overseas market situation of Chinese products, rush to register trademarks in the important sales market of Chinese products, and then resell trademarks or charge commissions in the name of infringement. For example, a Japanese rushed to register the trademark of Shanghai "hero" gold pen in Japan and asked the Chinese side to pay a commission of 5% of the sales volume of "hero" gold pen in Japan, resulting in the Japanese distributor of "hero" pen stopping selling on a commission basis because it was unprofitable. Experience 3: be alert to the competitors in the target market of the enterprise. In recent years, intellectual property disputes caused by trademark rush have increasingly become a new way for European and American companies to set up trade barriers against Chinese enterprises. The trademark dispute of "Hisense VC Siemens" is a typical case. If the industry in which Chinese enterprises are located is a highly competitive industry, it is particularly necessary to be vigilant against trademark preemption and interception from competitors. Experience 4: be alert to the coincidence of trademark registration. In the long-term development, Chinese enterprises often pay attention to the shaping and protection of Chinese trademarks, while the corresponding foreign logo simply uses foreign common words, which increases the probability of their own trademarks being registered. For example, Lenovo's original English logo is "leg end", which is a common English word and has been registered by others for use long ago. Therefore, Lenovo must change its logo if it wants to enter the American market

· the second form of anti preemptive betting · - prepare for a rainy day

experience is often meaningful but unspeakable. Therefore, it is no different from gambling to completely bet on "insight". To counterattack the rush to register, it is more necessary to establish a set of trademark defense system suitable for ourselves, so that we can spend the right money and do the right things. At present, there are three major trademark recognition systems in the world: the priority system of use, the priority system of registration, and the combination system of use and registration. "Priority system of use" the country recognizes the obligee by the original certificate of the trademark; "Registration priority system" countries determine the obligee according to the registration records of trademarks in that country; Countries with "combined use system" give consideration to both use and registration. For these three trademark recognition systems, different enterprises can adopt different trademark protection strategies. (1) Small and medium-sized enterprises. In general, small and medium-sized enterprises have achieved a certain amount of domestic business, and occasionally their products are sold overseas, but their products do not have the ability to lead the market at home and abroad, and their own trademarks are only a "distinguishing" sign. At this time, the analog-to-digital (a/d) conversion circuit of the enterprise's descendants will discretize the imitation quantity into digital quantity, so there is no hurry to register overseas, especially in the "priority system" countries. It is only necessary to entrust a domestic trademark office to monitor the trademark registration of the enterprise in the overseas potential market, while retaining the original certificate of the trademark, such as advertisements, invoices, contracts, notarial materials, customs declarations, etc. Most countries in the world have set up a "trademark registration objection announcement" procedure. Trademark offices regularly monitor the trademark registration announcements of the target countries. Once similar or similar trademarks are found, trademark objections can be raised to prevent the emergence of preemptive registration. For example, the article "macao trademark preemptive registration fight" is a successful case of cracking down on trademark preemptive registration through announcement monitoring. (2) Leading enterprises in the domestic market. The products of such enterprises have become the mainstream in the domestic market, accompanied by a large amount of export business, and their trademarks also have the function of "value-added" in addition to the role of "distinguishing marks". At this time, enterprises should start to consider the "Madrid trademark international registration" (hereinafter referred to as "Madri system") to resist the loss of intangible assets caused by the rush registration of trademarks. "Madrid system" is an international treaty system in which registrants can ensure the protection of their trademarks in many countries by submitting only one application, including the Madrid Agreement on the international registration of trademarks and the Madrid Protocol. The advantages of this system are: the cost is low, and the registration fee only includes "basic registration fee", "designated national registration fee" and "national trademark authority fee"; Save time. The applicant for international trademark registration can obtain the certificate of international trademark registration issued by the International Bureau of the World Intellectual Property Organization (WIPO) in about 6 months from the date of submitting the application for international trademark registration to the China Trademark Office; The procedures are simple. The applicant can designate many countries to apply for protection by submitting an application to the domestic trademark office, and the later procedures of changing name/address and renewal can also be realized through a single procedure. It can be said that the "Madrid system" is an economic way that not only protects its own brand, but also does not excessively increase the operating expenses of enterprises. It is particularly applicable in countries with "registration priority system". For countries that are not members of the "Madrid system", enterprises can adopt the method of registration one by one or continue to entrust domestic firms to monitor according to their own needs, and at the same time, properly keep the original certificate of trademarks that are beneficial to them for the purpose of resolving possible disputes. (3) Large enterprises with clear overseas development plans. For them, the best trademark protection measure is to entrust local professional firms to apply for overseas trademarks one by one according to the target market. This is because the "Madrid system" does not provide trademark retrieval services in various countries, which may lead to the rejection of registration applications due to similar or similar trademarks, which will cause duplicate fees. The local professional firms are familiar with the laws of their own countries or regions, and have professional trademark monitoring tools, which can provide accurate application suggestions for trademark registration and ensure the success rate of trademark registration applications. In addition, the "Madrid system" may delay the market opportunity for enterprises eager to enter the overseas market. According to Unitalen, according to the Paris Convention for the protection of industrial property rights, the widely used environmental experimental facilities in the member countries of the Convention are high-temperature, low-temperature and damp heat test boxes. The trademark applicant enjoys the characteristics of trademark software operation in other member countries six months from the date of trademark registration application: application priority. That is, an applicant in China filed a trademark registration application with the China Trademark Office on January 1st, 2005 and was accepted. The domestic trademark application date of the applicant is January 1st, 2005. Since then, the applicant has filed the same trademark registration application with France, Germany and other member countries of the "Convention" within 6 months, claiming priority and being able to provide priority notarization documents, then the application date of the applicant's trademark registration in France and Germany will be uniformly regarded as January 1, 2005. The application for registration of the same or similar trademark submitted by others to France or Germany after January 1st, 2005 is considered as a later trademark application and rejected. If the trademark is registered abroad through the "Madrid system", it will not enjoy the priority stipulated in the Paris Convention for the protection of industrial property. Because the "Madrid system" requires the completion of the applicant's domestic basic registration as the premise, and China generally needs more than one year to complete the basic registration. When the basic registration is completed, it has already exceeded the priority period. Therefore, for such a major overseas trademark strategic behavior as "Lenovo trademark exchange", which currently supplies vanadium products in this way accounting for nearly 90% of the total output, the application of one by one registration method can better protect the legitimate rights and interests of enterprise trademarks

· the third form of anti preemptive betting · -

although people are always eager to "spend the right money and do the right things", everything has accidents. If the trademark has been registered overseas, we have to use various means to try our best to recover it. First of all, the most righteous and strict means of recovery is to rely on the law. According to the provisions on the protection of well-known trademarks in the Paris Convention for the protection of industrial property and the agreement on trade related intellectual property rights, or according to Article 6 of the Paris Convention for the protection of industrial property, "if the agent or representative of the trademark owner applies for a registered trademark in his own name without the authorization of the trademark owner, the owner has the right to object to the applied trademark or request cancellation", If the enterprise can provide the original certificate and notarial materials of the trademark, the registered enterprise may rely on the law to regain the trademark. For example, the "rooster" mosquito repellent incense of our country is selling well in some countries in Africa and South America, and was rush registered by a businessman in Nigeria, and asked for huge infringement compensation. With the help of local agents, Chinese enterprises learned that the trademark registration in Nigeria implemented the principle of "priority of use". After three years of efforts, China provided various evidence of prior use, and the case ended in China's victory. However, legal means are often the most expensive. The cost of collecting evidence and entrusting lawyers is already very high, and the legal procedures are often delayed for years, resulting in enterprises missing market development opportunities. Secondly, the most tacit means of recovery is trademark negotiation. The motivation of the people who rush to register is nothing more than "profit". If enterprises can sit down and negotiate with the people who rush to register, they will get a comprehensive strategy that takes into account the market and benefits. For example, in the dispute between Hisense and Siemens, the two sides reached a consensus within half a month after negotiation. Although a pending case of "free transfer of VC six digit transfer fee" was left, the negotiation consensus won a favorable time for Hisense to enter the European market. Which is lost or gained, only Hisense itself has the right to choose between the two evils. It is worth noting that trademark negotiation is by no means a simple money game, but a comprehensive competition between the two sides in terms of public relations capabilities in government, society and so on. In the case of "Hisense VC Siemens", Hisense actively responded to the lawsuit at the beginning of the incident, and widely and actively cooperated with the media to report

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