China to Get Tough on Trademark Registrations

By: Claire Little *

FlagAs reported by Reuters, China is taking steps to crack down on “malicious” trademark registrations within the country. In December, the official Xinhua news agency reported that the Chinese legislature will consider an amendment which “will offer protection to major international brands, giving copyright owners the right to ban others from registering their trademarks or from using similar ones, even if such trademarks are not registered” in China.

The move comes after several high-profile international brands and individuals faced litigation in the country stemming from trademark misuse. In one such case, Apple found itself fighting for the right to use the “iPad” trademark within the country’s borders. Shenzhen Proview Technology registered the iPad trademark in China in 2001; the company used “IPAD” in the past for a product no longer on the market. Apple said that it bought global rights to the iPad name from Shenzhen Proview Technology in 2009, but Chinese authorities say the rights in China were never transferred. A Chinese court ruled in December 2011 that Proview still owned the name in China and was not bound by the sale despite being a part of the same company. RegisteredApple settled the dispute with Proview for $60 million — removing a potential obstacle to iPad sales in the key market. (Apple has also reportedly encountered a number of fake “Apple” retail stores in China; the stores look like authentic Apple retail locations, using Apple’s logos and trademarks, and sell authentic but unauthorized Apple products, which have been smuggled into the country in order to avoid taxes.) In addition to Apple, other big names, including Michael Jordan and Hermes, have faced trademark and copyright disputes within the country recently.

AppleIn the wake of these high profile cases, some believe that China is finally noticing pressure from foreign governments and the international business community to correct gaps in the country’s intellectual property law. China has “long been considered a haven for intellectual property infringement and piracy,” but by cracking down on malicious trademark registration, China can begin to provide assurance to international businesses of their ability to operate fairly and successfully in China.

* Claire Little is a second year law student at Wake Forest University School of Law. She holds a Bachelor of Arts in English and Philosophy from Virginia Tech. Upon graduation, Ms. Little plans to pursue intellectual property law.