Language and CultureLanguage and Culture

Impact on Trademark Strategy in China

Unitalen Attorneys AT Law

INDEX

Chinese market overview

Culture and language impacts on

trademark protection in China

Right approach to trademark protection in China

How is the Chinese Market Like?

Wine industry as example

1.4 billion population

Long history of alcohol consuming

Unique culture of alcohol consuming –

How is the Chinese Market Like?

In stead of tasting wines this way

How is the Chinese Market Like?

Many Chinese drink wine this way

How is the Chinese Market Like?

Year 2012

430 million liters of imported wines

USD 6 per liter

Total value - USD 2.5 billion

30% of total market share in China

The 5th largest consuming country for wine

How is the Chinese Market Like?

The other side of the story

Limited knowledge about wine

Less knowledge about imported wine

Spaces for counterfeits and imitations

How is the Chinese Market Like?

Counterfeit -

How is the Chinese Market Like?

Imitations -

How is the Chinese Market Like?

Imitations -

How is the Chinese Market Like?

Imitations -

Culture and Language Impacts

Why China is a highly risky market?Why China is a highly risky market?

Culture and Language Impacts

Cultural impacts

Copy – worship of masterpiece Limitation of creativity Fast food culture Lack of IP consciousness

Culture and Language Impacts

Linguistic impacts

Regional differences Traditional Chinese vs Simplified Chinese Translation vs Transliteration PIN YIN - phonetic spelling of Chinese

Culture and Language Impacts

Regional differences

Culture and Language Impacts

Linguistic impacts

Traditional Chinese vs Simplified Chinese

國畫 国画

Culture and Language Impacts

Linguistic impacts

Translation vs Transliteration

DELTA 三角洲 德尔塔 / 戴尔它 / 达乐他 ……

Culture and Language Impacts

Linguistic impacts

PIN YIN – phonetic spelling of China

海 尔 hai er

Culture and Language Impacts

60 Million USD

Culture and Language Impacts

卡斯特 卡思黛乐卡斯特 卡思黛乐33,730,000 RMB damage

Culture and Language Impacts

Culture and Language Impacts

THEFACEBOOK THEFACEBOOK

FACEBOOK FACEBOOK

SOUNDBOARD SOUNDBOARD

FACEBOOK DEVELOPER GARAGEFACEBOOK DEVELOPER GARAGE

Culture and Language Impacts

飞书博 飞思簿 飞思博 菲丝博克翡思簿 费司布克 脸谱 面书 脸书

Culture and Language Impacts

How to protect your trademark in the How to protect your trademark in the risky market?risky market?

Trademark Protection in China

No registration, no protectionNo registration, no protection First to file, first to registerFirst to file, first to register No use requirement for filingNo use requirement for filing

Trademark Protection in China

What can be registered as trademarks - Word marks

- Logo marks

- Sound marks (coming soon!)

Need a Chinese character mark?

Yes!!!

- Easy access to Chinese market

- Additional protection

Trademark Protection in China

BMW 宝 马(precious horse)

BENZ奔 驰

(running fast)

GUCCI古 奇

(ancient legend)

Trademark Enforcement Measures

• Administrative - Trademark oppositions and Invalidations

- AIC raid action - Customs protection

• Judicial - Civil lawsuit

- Criminal lawsuit

AIC Raid Action

AIC = Administration for Industry and Commerce

Having the power of

Maintaining market orderProtecting trademark rights and taking initiative

action against trademark infringementTaking initiative action against unfair-competition

AIC Raid Action

AIC took action against 59,085 Trademark

Infringement cases in 2012

Including

14033 cases involving foreign trademarks

576 cases transferred to public security bureau for criminal investigation

AIC Raid Action

Receive complaint from TM ownerReceive complaint from TM owner

Verify infringing factsVerify infringing facts

Conduct raid actionConduct raid action

Issue detaining noticeIssue detaining notice

Issue penalty decisionIssue penalty decision

Dispose infringing goodsDispose infringing goods

Transfer serious cases to PSBTransfer serious cases to PSB

AIC Raid Action

AIC Raid Action

AIC Raid Action

AIC Raid Action

AIC Raid Action

AIC Notice of Detainment

AIC Raid ActionAIC Penalty Decision

Customs Protection

Record registered trademarks with China General Administration of Customs

20 days – 2 months

Customs Seisure - ex officio

- upon request by trademark owner

Customs ProtectionNotification of Customs Seisure

Advantage

Quick, simple & relatively cost-effective

Suitable for straightforward trademark counterfeits & infringements.

Evidence preservation for potential court action.

Litigation – Civil

87,419 IP related litigation cases accepted and concluded in 2012

An increase of 46%including 15985 trademark cases An increase of 52.5%1429 foreign related IP cases

concluded in 2012

Litigation – Civil

Two instances 6-12 months for first instance 3-6 months for second instance

Statutory Damages up to 60,000 EURO (present)

up to 360,000 EURO (as of May 1, 2014)

Litigation – Criminal

13104 IP related Criminal Cases accepted in 2012

An increase of 129.6%

including 4664 trademark infringement cases

An increase of 150.2%

15338 persons confirmed guilty

Conclusions

Register your mark in China ASAP Register your mark also in Chinese characters

Educate Chinese consumers how to identify and where to purchase your authentic products

Never hesitate to take action against infringers

Consult your IP lawyer before there is a trouble!

Unitalen Attorneys at Law

Leading IP firm in China 700 employees 21 Branch offices in China Proficient in both prosecution and

litigation

THANKS FOR YOUR ATTENTION

THANKS FOR YOUR ATTENTION