During this year’s 2019 INTA Annual Meeting, our Greater China IP team discussed the following key issues around China's evolving IP landscape.
What's in store for brand owners in China?
Partner, Helen Xia discussed recent updates on strategies to curb trademark hijacking and factors leading up to this phenomenon. In recent years, China has had a high volume of trademark fillings due to the first-to-file principle, the lack of an intent-to-use requirement, and the low costs of filing marks. Internal and external pressures, including trade negotiations with the U.S., have given rise to these "bad faith filings". The recent amendment of the Trademark Law (TML) serves to stifle this practice through rejecting applications filed in bad faith and without intent to use. In principle, evidence is now requested for such filings.
While the law has not yet come into force, the lure of finding bad faith filings has already impacted China; the China IP Administration and related authorities have taken initiatives to reject trademark filings with obvious bad faith. Legislation changes aside, Helen Xia provided attendees with tips on how to bring your specific case to the forefront of the examiner and flagged trends to watch for.
Co-existence or no existence
Counsel, Yu-An Chang weighed in on the benefits and limitations of co-existence agreements. A coexistence agreement is one made by two or more parties so that similar marks can coexist without any likelihood of confusion. This enables parties to set rules to govern how marks can peacefully exist. Yu-An explained how to take advantage of these agreements, the evolving attitude of the courts to co-existence agreements, and ways to improve the prospect of registration. He discussed the similarity of trademarks, and how to point out differences to lessen the risk of confusion in the market.
Use it or lose it
Finally, Partner, Zhen (Katie) Feng wrapped up the engaging seminar on when the use of a trademark matters, and how to avoid or defend against trademark infringement. She dove into factors that impact the decision-making by the courts or China’s IP Administration bodies.
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