Case
The company is a state-owned enterprise in Tianjin, responsible for the mission of rural revitalization in particular area, according to the instructions of the district Party committee and district government to integrate the well-known geographical indications of the area into its management. The company immediately began the relevant trademark application filing work, and were rejected by the trademark office due to sharing high similarity with prior trademarks.
Action
After careful analysis of the reasons for refusal, combined with the field investigation, the defense idea with "coexistence agreement" as the core is determined. We have studied almost all the "coexistence agreement" successful cases since the promulgation of the trademark Law, and found that the recognition of co-existance under trademark examination is quite different throughout the years. In order to ensure the success in refusal review, the we request Municipal Intellectual Property Office repeatedly sent letters to CNIPA to clarify the importance of trademarks for regional brand construction of agricultural products, in order to obtain the support of the CNIPA.
Result
This is the first case in Tianjin that obtain successful result based on co-existance agreement.
This is the first case in our city to adopt "coexistence agreement" as argumentative response during provisional refusal and obtain success.The establishment of the "reasons for coexistence" in this case has also enriched China's trademark coexistence review practice cases (there are no more than 300 "coexistence" related cases in China).
Case
Chang X Technology Co., Ltd is a listed company, is a well-known printing equipment comany throughout the world. However, due to the lack of brand awareness in the early stage, there was no trademark protection for its brand name. In 2022, the client signed a perennial legal counsel agreement with us, and we suggest to immediately start the filing of application and obtaining the rights. A preliminary search revealed more than 100 potential prior trademarks were present in obstacles that shares high similarity.
Action
According to the needs, the potential prior trademark obstacles are divided into two categories, one is high-risk, needed to take action immediately, while another one is to plan in long term.
According to this, the plan was formulated and reported to the client. The essential filings took place in 5 classes at first.
Result
After 2 years, all essential trademark have either being published or registered.
Case
The long-term partnership between two individuals has had a significant impact, particularly following the dissolution of their business relationship. Party A remained with the original company, while Party B ventured out to establish a new business. The company's brand name is "Tai XX". After the partnership was dissolved, Party B registered this trademark and subsequently filed a civil lawsuit against Party A on grounds of infringement.
Action
Upon a thorough analysis of the case, our defense strategy has been formulated. The case involves allegations that Party B violated Article 32 and Paragraph 1 of Article 44 of the Trademark Law by registering a trademark that infringed upon the prior rights of others. This situation not only highlights the legal implications of trademark registration but also underscores the vulnerabilities in Party A's trademark protection strategy, which were unfortunately exploited. In response, we have adopted a dual approach: actively defending against the lawsuit while simultaneously initiating trademark filings and portfoilo management. This comprehensive strategy aims to both address the immediate legal challenges and strengthen the Party A’s trademark position moving forward.
Result
Litigation: Succeeded in defending the rights of the client (Party A) in the first and second Trial
Case
In 2022, the company applied for more than 400 trademarks within a short period of time, and was issued with provisional refusal notification by Trademark Office on all the proposed trademarks in suspect of violating Article 4 of the Trademark Law.
Action
In combination of the Trademark Law and the Trademark Review and Trial Guide, the batch of trademarks is divided into three usage purpose. The first portion is for descriptive advertising, it is recommended to withdraw. The second portion is for preventive purpose, use as back-up application to aviod being cancelled due to 3 year non-use, which is reccomended to withdraw as well. As for the very last portion, they are considered as appropriate defense and reserve for future business, which recommended to require the filing of response. The finally decision made by the client was to file refusal review response for a total of 127 proposed trademarks, and we helped the client to complete more than 100 pages of argumentation to submit to CNIPA.
Result
Has succeed in all decision of refusal review.
Not only to assist the client in safeguarding their rights, but also to clarify some misconceptions made by the examiner.
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