26-30 October 2009, Xi’an, Guangzhou, Tianjin
Officials from local offices of the Administration of Industry and Commerce (SAIC) and local industry participated in a series of workshops on the EU’s Community Trademark and 3-dimensional mark systems, organised in the framework of IPR2, together with the EU’s Office for Harmonisation in the Internal Market (OHIM) and China’s Trademark Office under the State Administration for Industry and Commerce (SAIC). The workshops helped to raise awareness of the CTM system and e-business tools among users and potential users in China and provided an opportunity for existing users to share their experience.
The workshop was attended by Mr Peter Lawrence, Vice-President of OHIM and the expert presentations were dedicated to CTM examination system, 3-D marks, opposition, cancellation, revocation and infringement cases as well as e-business services, quality, performance and statistics. Participants took the opportunity to talk directly with the European experts and were interested in the topics of enforcement, use of CTM, bad faith, performing searches, well-known trademarks, 3-D marks, opposition cases and infringement. Specifically:
3D-marks, well-known marks and marks with reputation (in China, SAIC decides which marks are well-known; this differs in the EU whereby the owner of the right has to prove on a case by case basis that the trademark is well-known).
Enforcement (In the EU OHIM cannot enforce IP rights; this is the jurisdiction of national EU Member State CTM courts).
Use of an unregistered trademark: whether a used trademark but not registered gives a right to protection in the EU.
Genuine use after a CTM is registered. Is use sufficient on the internet and where should you use it?
Grounds for opposition, including whether bad faith can be used as an opposition ground or only as cancellation ground?
Revocation procedure to prove no use (the CTM owner has to prove that the CTM is used).
Geographical indications, possibility of registering a GI as a CTM?
Searches done in EU and possibilities for pre-search and pre-examination.
Searching for figurative marks and the Vienna classification.
Article 29 in Chinese TM law: Proof of prior use required to file with OHIM (co-existence between identical marks with identical classification when filed on same day).
Automatic extension of registration to new Member States following an EU enlargement.
China and the EU closely co-operate on trademark issues. Mr de Boer and Vice-Minister Fu Shuangjian of SAIC had previously signed a Memorandum of Understanding in April 2009 with respect to continuing cooperation activities to increase the efficiency of registration procedures and exchange best practice on the management of trademark processes on trademark registration issues. View press release.
Office for Harmonisation of the Internal Market (OHIM)
State Administration for Industry and Commerce (SAIC)
For more information on this activity, contact Mr Andreas Obst
For general information on IPR2, contact Ms Tamryn Barker
[IPR2 ref: CC6.AW2.006]