The revised Trade Mark Law was enacted in 2014 to much fanfare, as it included important new provisions targeting bad faith applications by trade mark hijackers, a recurring problem that has plagued brand owners in China. Unfortunately, in the 5 years since the enactment, the new provisions have done little to reduce trade mark hijacking activity and the onus has remained with brand owners to oppose or invalidate hijacked marks.
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On June 24, 2019, the U.S. Supreme Court rejected the prohibition against registering immoral or scandalous trademarks, holding that the ban against such trademarks violates the First Amendment by discriminating on the basis of viewpoint. In a 6-3 vote, the Justices, in an opinion written by Justice Kagan, explained their decision to invalidate the Lanham Act’s prohibitions on registrations that “[c]onsist of or comprise immoral … scandalous matter” (15 U.S.C. § 1052(a)), stating that “[t]he government may not discriminate against speech based on the ideas or opinions it conveys.”
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Back in 2015 Constantin Film AG, the production company of the German movie „Fack ju Göhte“, filed an European Union trademark application (“EUTM”) for its movie title „Fack ju Göhte“ with the European Union Intellectual Property Office (“EUIPO”). The EUTM application was refused by the EUIPO based on an alleged infringement of public policy and common decency. On top of that, EUIPO was of the opinion that the title of the movie is an offensive insult that would damage the German highly respected writer Johann Wolfgang von Goethe posthumously. Constantin Film’s appeal against this decision was also not successful, so that they now brought that case before the General Court of the European Union.
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Now that the time of the year has come, it seems like everything is all about finding the perfect gift, decorating your house in the most beautiful Christmas colors, baking Christmas cookies and of course, going to Christmas markets. But even while we are enjoying the peaceful and contemplative atmosphere – and obviously to drink one or the other mulled wines we are not spared from being confronted with the German trademark law. Insofar we would like to conclude this year with  a decision of the German Patent Court which dates back to 2006, but which perfectly fits into the advent and Christmas season.
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Trade marks will not only be associated with the company they origin from, but might also be associated with certain quality or ethical standards. Certain associations are using their trade marks only to license it to producers who fulfill a certain standard. While some jurisdictions recognize such use of a trade mark as sufficient to maintain trademark protection, the European Union Trade Mark Regulation (EUTMR) does only mentioning the term “genuine use” of a trade mark. On 8 June 2017, the Court of Justice of the European Union (CJEU) has decided whether using a trade mark only to indicate certain quality or ethical standards can be seen as “genuine use”.
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On 24 April 2017, the Beijing Intellectual Property Court (“ the Court”) published 18 classic cases concerning trademarks filed in bad faith. One of these cases dealt with a invalidation action filed by Tiffany and company (“Tiffany”), the luxury jeweler.

Tiffany prevailed in the invalidation action brought in 2013 against Chinese trademark registration no. 8009772 for “蒂 凡尼” (pronounced as “Di Fan Ni” in Mandarin) on wallpaper, carpets etc. in Class 27 in the name of Shanghai Zhendi Decoration Materials Co., Ltd. (“Shanghai Zhendi”). After the Trademark Review and Adjudication Board (“TRAB”) rejected the registration, Shanghai Zhendi appealed to the Beijing IP Court.
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Michael Jordan, the legendary NBA star, has finally established his rights in his Chinese name after 5 years of intensive administrative and appeal proceedings in China.
In China, Michael Jordan is more commonly known and addressed by the Chinese name “乔丹” (pronounced as “Qiao Dan” in Mandarin) which resembles the pronunciation of his last name “Jordan”. The present case is another typical example of a foreign brand owner’s name being hijacked by a local Chinese entity. The hijacker used both “乔丹” and “QIAODAN” as trademarks on shirts, sport shoes and apparel manufactured and sold in China since 2000. Michael Jordan had a long and hard fight to get his name back. He is now half way through recovering his Chinese name “乔丹” trademark, whilst the transliteration of his Chinese name “QIAODAN” is still in the hands of third parties.
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busy Street scene with neon signs in Hong KongIntellectual Property (“IP”) rights are only as strong as the means to enforce them. Arbitration, as a private and confidential procedure, is increasingly being used to resolve disputes involving IP rights, especially when the dispute is between parties located in different jurisdictions. With the introduction of the Arbitration (Amendment) Bill 2016 (“Bill”), the Hong Kong