TIPO Successfully Battles Trademark Squatting in China

Taiwan IPO has recently battled trademark squatters in China through the mechanism of assistance in handling cross-strait trademark matters by assisting the proprietors of three Taiwanese trademarks and brand names, “女人我最大”, “CSBC”, and “曼黛瑪璉” in successfully invalidating registrations of the three squatted trademarks in China. 

The five Chinese characters “女人我最大” (English name: Lady First) is the name of a famous TV program about improvement of beauty and fashion in Taiwan in Taiwan.  Audience ratings of this program have been staying high due to the immense popularity among female audience since it was first broadcast in 2003 in Taiwan.  People in China have been able to watch this program at www.tudou.com since it was aired also in China.  Likewise, periodicals issued under the said program name have been familiar to Chinese people.  However, trademark squatting occurs following the increasing fame and popularity of this program.  Chinese nationals outflanked Taiwanese proprietor in registering exactly the five Chinese characters of the program name, “女人我最大” as a trademark in bad faith for its designated use on periodical products.

Another trademark squatting by Chinese nationals occurred to China Shipbuilding Corp., whose English company name abbreviation, “CSBC” had been registered in bad faith by their former director as a trademark in China before CSBC Corp., Taiwan, notwithstanding the facts that CSBC Corp. has been using the said abbreviation since 1973 and the said abbreviation carries the prominent reputation of CSBC Corp., Taiwan in the international shipbuilding industry.

According to the Taiwan IPO, when trademark squatting occurs to the Taiwanese proprietors of well-known trademarks in China, these proprietors usually face a difficulty in proving the well-known status of their trademarks in China even if they can substantiate the extensive use of their trademarks in Taiwan.  Such difficulty comes from the vast territory and population of China.  Both the true proprietors of the five Chinese characters of the program name, “女人我最大” and China Shipbuilding Corp. lost in their oppositions, for which Taiwan IPO suggested them to reinforce the evidence against the fact of bad faith registration.  Also, Taiwan IPO acted through the mechanism of assistance in handling cross-strait trademark matters to request China to face up to the persistent occurrences of trademark squatting encountered by Taiwanese businesses in China, and finally and successfully reversed the result of oppositions after the reexamination proceeding. 

In addition, another Taiwanese well-known brand confronting the same trademark squatting is Mode Marie, whose four Chinese characters mark “曼黛瑪璉” and stylized “M” mark that have been used on their underwear and brassiere products were also registered in bad faith under the class of vibration massage apparatus in China.  Based on the fact that the rightful proprietor of the four Chinese characters mark “曼黛瑪璉” and stylized “M” mark holds the copyright in the stylized “M” mark, Taiwan IPO suggested the proprietor to add a claim for damages arising from infringement upon the earlier copyright for the stylized “M” mark, even though vibration massage apparatus is not under the similar category to that of underwear and brassiere products.  Finally, Chinese authority invalidated the bad faith registration for the Chinese characters mark “曼黛瑪璉” and “M” mark.  This case, therefore, stands for a rare example of successfully combating trademark squatting by assertion of legitimate copyright. 

Taiwan IPO renders the following suggestions and opinions for fight against trademark squatting in China.  The high evidentiary requirement is that Taiwanese proprietors of well-known trademarks and brand names must prove not only the extensive use of the trademarks in question in China, Taiwan, and in other countries, but also the trademark squatter’s bad faith registration.  Further, copyright registration would provide more effective protection against trademark squatting if the well-known trademark in question is a device mark and also a work eligible for Copyright Act protection.  In that case, trademark proprietor can also claim infringement upon his/her copyright that has been earlier registered, so as to protect his/her trademark right.  (March 2015)
/CCS