trademark | ZUOXING

How to Trademark a Phrase

August 12, 2019August 3, 2019

Each major company or organization has a specific slogan or phrase to help consumers remember them. The current Mercedes-Benz slogan is “The best or nothing”. This phrase helps represent what Mercedes-Benz as a brand stands for. Mercedes-Benz promises to deliver “the best or nothing” through everything they do. Taylor Swift made headlines when she filed trademark applications for several phrases from her “1989” album, including “this sick beat.” Michael Buffer’s phrase, “Let’s get Ready to Rumbol” was trademarked in 1992. And Nike has built its slogan on the trademarked phrase “Just Do It.” Why trademark a phrase? Trademarking helps ensure that no one else can use a similar phrase to promote similar products or services. It is very simple and good way to compete with your competitors and make your goods and services stand out in market. When can you trademark a phrase? Of course big companies and famous people can trademark phrases, but what about other people? Can you just trademark any phrase? The answer is that phrases, like anything else, are subject to certain trademark rules. First, you must use the phrase in commerce, or intend to use it in commerce. That means that you must use it to sell some sort of goods or services. You can’t trademark a phrase just because you like it and don’t want anyone else to say it. Second, when you file a trademark application, you must identify the types of goods or services that you want to use your trademark on. In order to protect your applied trademark, your phrase can’t just describe those goods or services – it must be more unique than that. Michael Buffer was granted trademarks to use “Let’s get ready to rumbol” in connection with his activities, events and sports. Third, you can’t trademark a phrase or trademark a word if it is deceptively similar to a phrase or word that’s already been trademarked for the same type of goods or services. Phrases are deceptively similar if people are likely to be confused about the source of a product or service. Steps to trademark a phrase in China Step 1. Creat a phrase to trademark You can’t trademark a phrase which is not exist. Deeply understand the brand or idea you are trying to promote. Keep your slogan short, memorable, and appropriate for your audience. The most valuable trademarks are those with inherent distinctiveness, such as newly made up words or the use of words not normally associated with each other, for example “为发烧而生” was registered by Xiaomi Technology in China. You can use a common word or phrase, but be attention that to get a trademark, you need to show that the phrase has a “secondary meaning” that makes your customers remember your products or services differ from other competitors. You should also be able to describe the representation, or how your phrase will look. If you want to add any specific design element to your slogan, that becomes part of the trademark. A combination …

China say NO to malicious registered trademarks

August 23, 2019May 16, 2019

On April 23, 2019, the Tenth Meeting of the Standing Committee of the 13th National People’s Congress deliberated and adopted the “Decision on Amending the Trademark Law of the People’s Republic of China”, fully responding to the various sectors of society in recent years about the application of trademark law with difficult opinions and suggestions. The fourth revision of the Trademark Law is an important measure to promote the high-quality development of intellectual property rights in response to China domestic market demand. There are still some voices that do not understand or even question the revision of the trademark law in the current society. We believe that it is necessary to provide a clear and concise interpretation from the perspective of jurisprudence. The content of the trademark law modification will help to clean up the business environment, regulate the registration application of trademarks, and improve the protection level of prior users and relevant stakeholders. Registered trademarks must be used for the purposes Applicants who registered hundreds, thousands or even tens of thousands of trademarks without the purpose of use are indeed exist now. These acts have severely reduced the function of the registered trademark system in China’s trademark law and alienated China’s trademark registration system. The trademark law modification has imposed containment measures on the application for registration of malicious trademarks for the purpose of non-use, and has set up containment measures at the time of application, within 3 months after the preliminary examination and announcement, and has been registered Penalties for malicious litigation. The revision of the Trademark Law provides the following valid legal basis for solving these problems that have long plagued the community. Regarding the purpose of use and its evidence The “purpose of use” added in Article 4 of this revised Trademark Law is the basic stone for all legal norms to curb the application for registration of malicious trademarks. Since the current law does not stipulate the “purpose of use” as a requirement for a registered trademark application, the trademark reviewer does not examine whether the applicant has the“purpose of use”, but only in case of objection, withdrawal and invalidation procedures they review whether the person or registered trademark owner has “purpose of use”. According to the revised Trademark Law, applicants should be required to submit evidence of “actual use” or “honest use intention” at the time of registration of the trademark application. For the “defense trademark” that the industry is widely concerned with, it is recommended that the “defense” itself be regarded as “honest use intention” if it is necessary to exist. Of course, if in the future the trademark reviewer can prevent others from registering the “defense trademark” which should have belonged to other third part, it will release many symbol resources that can be registered as trademarks. The responsibility of the trademark agency Article 19, paragraph 3 of the amended Trademark Law stipulates that the trademark agency knows or should have known that the trademark applied for against the principle belongs to …

Trademark conflict

August 12, 2019March 21, 2019

Trademark conflict-Playmags As we talked again and again before, trademark registration is very important at the beginning of your business. Trademark protection is regional protection. Brand owners should register trademark in different areas to protect their trademark rights even though they haven’t start business there. Here we share one trademark conflict case to show you why it is important to register trademark in China. Playmags is one famouse brand in children toys in UK, the company Playmags Toys LTD produce colorful magnet cards. The mark Playmags was succefully registered in UK and USA, but it is not registered in China. It has legal sellers in United Kingdom and USA. But one guy registered the same trademark in China. The playmags Toys LTD lost the opportunity to register trademark in China, as well as to sell products in China market. Now some guys in China sell same brand products including children toys online taobao. Below are chatting screenshots you can see provided by one buyer. You can see clearly that, after the buyer show the chatting screenshots to brand owner, he deeply understand it is fake product seller, the seller is telling a lie. Below are emails from Playmags Toys LTD. The seller also provide the “invoice” he bought products from Playmags Toys LTD, but the owner said it is not document they provided for the seller. With our help we found the seller in China registered Playmags trademark in China years ago. The seller seize the opportunity to do it. Now Playmags Toys LTD has no more action about this trademark infringement action. We will continue to help Playmags UK if needed in future. This trademark conflict example clearly show us the brand owner has often ignored the importance of trademark application at the business starting. Study trademark terms Brand owner should deeply understand the trademark terms in different countries with the help of professional IP lawyers no matter only develop local market or will definitely develop overseas market. Generally speaking, the IP lawyer will give a report on similar trademarks, registered trademarks and competitors’ trademark in same industry. The mark owner can clearly say their requriements in order to avoid trademark refusal. By this way, the owner can apply trademark registration in different countries and different nices which they plan to engage in business in future. Search conflicting marks After the trademark registerd first in local area in success, the owner has 6 months priority to apply same trademark in other areas following Marid registration process. The trademark lawyer can monitor any application and submit cancellation for same mark registration. The owner must apply the registeration as soon as finding other guys try to steal their marks. All in all, if your trademark is only registered in local market it will be huge risk for oversea market places. Protecting trademark is first job each company should take into action as trademark property is one of the most important property in running business.

Why you need register a trademark in China?

August 12, 2019March 13, 2019

Applying for a trademark is a crucial and an important step that’s often ignored or overlooked by exporters. China is a “first-to-file” country which means that the person who registers a trademark for a product first, will also have all exclusive rights to distribute and sell the product in China market. You won’t, unless you register the trademark first. Expand your brand market share With the 20% of total population in the world, China market is extremely important for any company. You have no excuse to lose your product or services in China market. Registering trademark is the first step to allow you export product or services into China. It usually spends you less engergy and money, but will make you good profit in coming days. It is really helpful for the company to creat brand image and grow up business in its own industry. Take famous brands in Europe, United States and Japan for example, you can easily see LV, BMW, Benz, ….. and so on. China consummers spent lots of money to buy these brand products, the number is also raising every year. These foreign companies have earned good business in China, importantly, they all have intellectual property actions upon the first day of expanding their business abroad. On another hand, if your company just start up business and launch new products with your brand locally, maybe you plan to go to the trade fair for exhibition. Here I need remind you, please register your trademark in the country where you plan to. In China, same situation usually occurs. If you ignore to apply china trade marks for your products, soon you may find from China trademark database that somebody “helped” you register your trademark in China. It is crucial harmful for your products brand, you need handle this issue spending lots of energy and time with the help of professional lawyers. Brand authorization to your distributor With your own trademark registered in China, you can give legal authorization to your distributors who can help you do advertising, products selling, service offering and brand influence creating. A good Chinese distributor will insist that you register the trademark first; a less experienced (or shady) distributor might register your trademark “on your behalf” without telling you. More importantly, your distributors can learn from market which products are selling popular, what trends will come in your industry, what local consumers are taking care, all of these factors will give you solution and ideas for next generation product updates. In this way, your company products will in a rolling circle which makes your market share bigger and bigger. Take down infringing listings on Chinese e-commerce sites If you only have a trademark registration in the US or EU or some other jurisdiction outside China, you should be able to submit takedown requests to foreign-facing sites like Alibaba, Amazon, JD.com, ebay. But to remove listings from domestic Chinese e-commerce sites like Taobao, JD and 1688.com you almost always need a Chinese trademark registration. …

What influence for your patent if Brexit come true?

June 5, 2019November 1, 2018

Someone who is interest in protecting his invention in Europe and mainly in the United Kingdom could be asking himself about the consequences of the Brexit for his invention processes. Well while the situation with regard to the Brexit is uncertain, keep in mind that the European Patent Treaty is not a Community treaty but rather that the United Kingdom adheres to it as an individual country and its departure from the EU would not affect the patents validity in this country. A different issue will be the issue of European trademarks or the future unitary patent, figures in which the United Kingdom participates in its status as an EU member, not at the individual level. Therefore, the European patent applications would not be affected a priori.