Nexus: China IP.

‘Day day up’ trade mark case and two English systems in China

Read

Many years ago, in a junior high school English exam, this Kat wrote a phrase she had encountered several times in English magazines and American movies, etc.: ‘Long time no see’. To her surprise, her favourite English teacher – at the time – circled the ‘mistake’ with harsh red ink and sharply criticised this apparently ungrammatical turn of phrase.

The red circle has remained fresh until today... and it prompted this Kat to realise the co-existence of, at least, two categories of the English language: the one that is considered correct by, well, the ministry of education at that time and the other, which embodies the rest, which apparently includes some widely-used expressions that are not entirely grammatically correct.

For instance, ‘long time no see’ (the metaphrase of ‘好久不见’, meaning: ‘(I) Have not seen you for a long time.’), functions as a pidgin, which facilitates communication instead of obstructing it. Consequently, it has long been used as a fixed expression in Hard to Kill (movie, 1990), Rabbit Rest (book, 1990), Cider House (book, 1992) and Mask (movie, 1994) - so, it’s not so ‘wrong’, is it?

Recently, a case in China raised a similar question: when it comes to assessing the similarities between two verbal signs – one in Chinese and the other in English - does the ungrammatical metaphrase of the Chinese sign count?

Background

Case reference: No. 6336 [2018], Final, Administrative Division, Beijing, of the Higher People's Court of Beijing Municipality. (See the final judgment here)

In 2017, Beijing Feiniu Technology Co., Ltd filed a trade mark application for ‘DAY DAY UP’ (no 22683352) in class 36 for the services of, inter alia, real estate agency, real estate rental, financing services, art valuation, brokerage and insurance information.

The application was rejected by the Trademark Review and Adjudication Board (TRAB) due to its similarity with the cited trade mark registration ‘天天向上’ (no 7681658) in the same class.

'天天向上' comes from the Chinese proverb '好好学习，天天向上', meaning 'to study diligently and make progress daily.' 'DAY DAY UP' is a jocular, yet intentionally, word-for-word translation of '天天向上'.

[A brief EU-China comparative point here:

The EUIPO only examines the absolute grounds for refusal ex officio. The relative grounds for refusal are inter partes proceedings based on likely conflict with earlier rights.

The China Trade Mark Office examines both the absolute and relative grounds for refusal ex officio, which explains why in the paragraph above it mentioned the trade mark application in discussion was rejected by the TRAB, during examination.]

TRAB v Courts

In summary, whilst the TRAB believed ‘DAY DAY UP’ had widely been taken as the translation of ‘天天向上’ in China, both the courts of first and second instance (i.e. Beijing IP Court and Beijing Municipal High People's Court) did not agree.

Specifically, Beijing Municipal High People's Court pointed out that, (1) ‘DAY DAY UP’ is not the ‘fixed and regular’ translation of 天天向上; (2) Ultimately, the TRAB failed to provide evidence that proved the irregular translation had, in fact, become a widely accepted idiom among the Chinese public; (3) The signs in dispute differed in overall composition, pronunciation and meaning, and therefore were not regarded as similar to each other.

Comment

The difference between a verbal sign in Chinese and a verbal sign in English normally lies not in pronunciation or appearance, but in their meanings. The comparison then entails their (1) proximity in meaning, and (2) the relevant public’s general cognitive level and understanding of the English sign in question.

With regard to (1), the Beijing IP Court opined that, ‘DAY DAY UP’ is three ‘complete and independent’ words, which, as a whole, shall not be regarded as a fixed English collocation for ‘天天向上’.

Maybe true; only, what is the ‘fixed English collocation’ here? Which dictionary provides the standard?

A quick inquiry shows that there are several well-documented tentative translations of '天天向上' reading as ‘climb higher everyday’, ‘making progress every day’, ‘progress daily’, and well, notably, ‘DAY DAY UP’ (in here in 2007, here in 1992, and here in 1995). So, at least some preliminary conclusions can be drawn at this point. First, no matter whether it is grammatical or not, ‘DAY DAY UP’ has been a de facto expression of ‘天天向上’ since the ‘90s. Yet apparently, it is not the sole corresponding translation of ‘天天向上’, as there are several grammatical translations existing as well. Second, although the courts did not clarify which dictionary qualified as the standard, they certainly indicated the acceptable translations are not in the category of ungrammatical idioms.

Turning to (2), ‘DAY DAY UP’ may have created considerable awareness – not only because it is catchy and easy to remember, with a light-hearted touch. It also shares a name with the TV show ‘天天向上’, whose English title ‘DAY DAY UP’ (see IMDb page here), has very likely facilitated the imprint of ‘DAY DAY UP’ in China. The show, broadcasted every weekend since 2008, has gained a large audience.

Article 8 of the Provisions of the Supreme People's Court on Several Issues concerning the Trial of Administrative Cases involving Trademark Authorization and Confirmation (Interpretation No. 2 [2017] of the Supreme People’s Court) suggests that:

When the disputed trade mark is a foreign language sign, the People's Court shall judge whether the foreign-language trade mark possesses distinctiveness based on the general knowledge of the relevant public within the territory of China.
…

Questions remain - when it comes to the ‘general knowledge of English’ in the relevant public, must it be a grammatical one? Not necessarily, according to the TRAB - but how to prove such viewpoint, particularly in the vast China? That would be a major challenge, if at all possible to undertake. Therefore, in the absence of feasible evidentiary process, it is understandable that the courts would simply take the more conventional and grammatical approach.

So, all in all, there seems to be at least two categories of English language in the eyes of Chinese courts. One contains the idiomatic and regular English words and phrases, that are acceptable by the courts, and the other one embraces the rest, in which, some of the expressions maybe already widely accepted in the relevant public.

The take-away from this case, then, is to be aware of the different English categories in China, and to choose wisely from the right one, based on one's actual needs.

Photo credit: Xiaoxi_by Sherry Zeng

Read More Add comment

China introduces new regulation tackling bad faith trade marks… and who is Jing Hanqing?

By 0x000216

Read

0 Comments

As a key point of the Chinese government’s initiative to curb the proliferation of bad faith trade mark applications, Several Provisions for Regulating Application for Trade Mark Registration (规范商标申请注册行为若干规定, hereinafter referred to as ‘the Provisions’) will go into effect as of 1 December 2019. The full text (in Chinese, Google translatable) has been published on the China National Intellectual Property Administration official website (CNIPA, which used to be SIPO).

The Provisions are intended to achieve the following:

1. Strengthening the principle of good faith by (1) summarising and listing prohibited behaviours that are scattered in several provisions of the Chinese Trade Mark Law under Article 3; (2) holding accountable not only applicants, but also agents who facilitate activities that violate the principle of good faith (Article 4).

2. Enumerating the factors to consider to detect bad faith applications in Article 8, e.g. the number of applications, designated classes and the status of trade mark transactions. This is a welcome move as it enhances the transparency and operability of trade mark reviewing.

3. Strict punitive measures might be imposed on both applicants and the agencies representing them. Specifically, in terms of monetary punishment, bad faith applicants could be fined up to three times their illegal gains (no more than CNY 30,000) and agencies that facilitated bad faith application activities could be fined up to a maximum of CNY 100,000. In severe circumstances, the agency may be ordered to suspend their business as well (Article 13); Non-monetary punitive measures include but are not limited to publishing the penalty information via the national enterprise credit information publicity system (Article 14) and authorities may conduct the rectification inquiry with the responsible persons from the agencies (Article 15).

Jing Hanqing

In addition to the Provisions, CNIPA published an accompanying Q&A (in Chinese, Google translatable), in which a specific individual’s name was mentioned in Question 5: ‘The recent bad faith trade mark applications, especially the name of the well-known internet celebrity Jing Hanqing was maliciously squatted, have caused widespread public attention. How should we deal with bad faith trade mark applications?’

Before finding the answers, this Kat was wondering who Jing Hanqing is and what happened to him. The curious inquiry led to an absorbing story…

Jing Hanqing (敬汉卿) is a famous vlogger at a video sharing website called Bilibili. He had 6.62 million followers as of 30 October 2019.

In May 2018, a trade mark application for 敬汉卿 (yes, this is identical to the three Chinese characters shown in the paragraph above) was filed by Zhiqiao Electronic Products Sales Department (‘Zhiqiao’) in class 41 for services of entertainment, video production and downloading (application no 31259902). The application was approved on 28 February 2019. This looked like just another ‘normal’ trade mark squatting story, at least until August 2019, that is when Jing Hanqing received a ‘trade mark infringement notice’ sent by Zhiqiao.

The notice asked Jing Hanqing, in an unquestionable tone, to stop infringing the 敬汉卿 trade mark registration. In other words, Jing Hanqing must stop using his own name on all media, including WeChat and Tencent, or Zhiqiao would enforce its exclusive trade mark rights.

Shocked, Jing received a follow-up email from Zhiqiao, informing him that the trade mark had been resold at a profit several times and advising him to ‘deal with this matter wisely’.

Considering the high costs in terms of time, energy and money in safeguarding certain rights, the so-called ‘wise solution’, or rather the usual practice, is paying off the ‘evil doers’ and having ownership of the trade mark transferred. By doing this, disputes are settled. In the meantime, however, such compromises eventually tip the scales of power in favour of ‘the dark side’.

Unlike other peacemakers, Jing did not follow the usual procedure. Instead, he posted a video and ranted to an audience of millions. The video rapidly became viral and triggered extensive discussions – this may explain why he has become an icon in the fight against bad faith trade mark applications.

The strong pressure of public opinion drove Zhiqiao to eventually withdraw the said trade mark registration.

Comment

Trade mark squatting is a topic of platitude already. Normally, through early application (roughly speaking, China has a ‘first-to-file’ system for trade mark registration), or more actively, by applying for invalidation or cancellation of the pre-emptively registered trade mark, one can formulate an effective countermeasure against squatters.

What Jing Hanqing encountered was an escalated version: it seems absurd for an individual to be pre-emptive enough to file a trade mark application for their own name, just for the purpose of not being asked to stop such use. In this sense, the Provision provides practical guidance. Together with the revised Trade Mark Law of China (which has just taken effect as of 1 November 2019), the upgraded legal framework is expected to prevent bad faith applications more effectively.

On the other hand, this Kat cannot ignore the clouds of doubt forming. For instance, the biggest problem may be Article 2 of the Provision which reads as follows:

When applying for a trade mark registration, an actual need for the exclusive right to use the trade mark for goods or services in production and business activities is required and shall not harm the existing prior rights of others. (emphasis added)

As known, when it comes to the acquisition of trade mark rights in China, and in fact in many other jurisdictions, e.g. under European trade mark law, registration itself suffices. That is to say, whether the mark is actually used or not is of no relevance at the stage of application, nor does the ‘actual need’ serve as a condition for obtaining registration—curbing bad faith trade mark applications shall not be at the expense of the consistency of Trade Mark Law. Hence, there is perhaps still room for improvement and a more elaborate revision of the Provisions.

Photo credits: Tiandian Ma

Read More Add comment

Beijing IP Court: Moutai is excellent, but not exclusively so

By 0x000216

Read

0 Comments

Kweichow Moutai (or Guizhou Maotai) is probably the most famous liquor in China. As early as 1915, it was awarded a silver medal in the Panama Expo, and it is frequently served at diplomatic and other important national occasions. Many consider Kweichow Moutai the national liquor of China. So does Kweichow Moutai itself.

Over the past two decades, Kweichow Moutai Co. Ltd. (KMCL) has made several attempts to seek trade mark protection for ‘国酒茅台 (the national liquor Moutai)’ and ‘茅台国宴 (Moutai state banquet)’.

Some facts

- ‘Kweichow’ is the province in which Moutai is produced. Like champagne or Bordeaux wine, also ‘Kweichow Moutai’ is a geographical indication. Specifically, while all the liquor produced in Moutai Town in the Kweichow Province may be called ‘Kweichow Moutai Town Liquor’, only that which is made by KMCL carries the exact name ‘Kweichow Moutai’.

- Moutai liquor can only be produced within a narrow valley of less than 10 km² along the Chishui River in Moutai Town of Kweichow Province, because of its irreplaceable terroir.

- Many call Moutai ‘the creator’s grace’. Grace, like many others, is often rare. Combined with the special manufacturing process, Kweichow Moutai has very limited production.

- There is some historically traceable evidence that supports Kweichow Moutai’s claim of being the national liquor. For instance, as the then-Prime Minister Chou Enlai explained to former President Richard Nixon during a banquet that, ‘during the Long March, Moutai was used by us to cure all kinds of diseases and wounds’, with Nixon then proposing a toast to the ‘panacea’. (source: washingtonian)

The ‘national liquor’?

In 2001, KMCL began filing trade mark applications for ‘national liquor Moutai’ in class 33 for products of alcoholic beverages. However, most of those did not survive preliminary examination. In 2012, four applications for ‘national liquor Moutai’ (in Chinese, application numbers 8377491, 8377533, 8377511 and 8377467) did successfully pass the initial stage but faced 95 oppositions, the majority of which filed by the company’s own competitors.

These four temporary victories came as a surprise: according to ‘The Examination and Trial Standards for the Trade Marks containing “China” or starting with “National”’ (full text available here, in Chinese, Google translatable) issued in 2010 by the State Administration for Industry and Commerce (now the State Administration for Market Regulation), applications containing these words would be rejected due to deceptive and exaggerated advertising, lack of distinctiveness, or adverse effects.

In December 2016, the Trade Mark Office rejected the four applications, and no further details were made available. Eventually, on 13 August 2018, a statement appeared on KMLC’s official website stating it ‘sincerely apologise[s] to the Trade Mark Office and all relevant stakeholders’. The company also stopped using ‘the national liquor Moutai’.

Or ‘the liquor for state banquet’?

On 11 October 2002, KMCL filed a trade mark application for ‘茅台国宴 (Moutai state banquet)’ (filing no 3333017, in class 33), which was rejected by the Trade Mark Review and Adjudication Board (TRAB, terminated on 18 February 2019 by means of Notice No. 295 of the National IP Administration due to institutional integration). In 2016, KMCL sued TRAB in the Beijing IP Court (‘the Court’).

On 18 September 2019, the Court’s ruling ([2016] Beijing 73, First Instance Administrative Judgment No. 6389) was published (Chinese text available here, Google translatable), dismissing KMCL’s claims for the following reasons:

(1) Although the evidences submitted by KMCL proved that Kweichow Moutai had been used at national banquets for many times and has a high reputation, “Moutai state banquet” should not be registered as a trade mark for alcoholic products, as it would be easy for the relevant public to regard the relevant products as being dedicated to the state banquet, and thus misidentify its quality, grade and other characteristics.

(2) The registration of a trade mark containing “national banquet” for alcoholic goods would confer exclusive trade mark rights to its proprietor, which would not only be unfair to other players within the industry, but would also have certain negative impact on the public interest.

Therefore, to avoid the proliferation of trade marks containing the word ‘national’ and maintain fairness within the market, the Court upheld the TRAB’s findings on KMCL’s violations of Article 10.1(7) and (8) of the Chinese Trade Mark Law:

Article 10: None of the following signs may be used as trade marks:
…
(7) Those that are deceptive and likely to mislead the public in terms of the quality, place of production or other characteristics of the goods; and
(8) Those detrimental to socialist ethics or customs, or having other unwholesome influences.
...

The first judgment has come into effect, as neither party appealed.

Comment

The motivation for these ‘national-’ trade mark applications is of course elusive: it may be out of (over) confidence, intentional pre-emption, or event marketing. Nevertheless, the reasons for the two decades of failure are quite clear:

(1) A trade mark is an exclusive right, whereas ‘liquor for state banquet’ is not. In China, several liquors have been served at state banquets, e.g. Yanghe, Gujing Gong, Fen and Changyu. A trade mark registration for ‘liquor for state banquet’ or ‘national liquor’ not only seeks to monopolise the honourable title, but more seriously, might lead to the wrong assumption that Kweichow Moutai is the one and only national-level excellent liquor, which is far from truth.

(2) A simple scan shows that Kweichow Moutai produces several products, e.g. aged Moutai (80 year, 50 year, and 30 year), regular Moutai and low-alcohol Moutai, yet only the one in the ‘soy sauce coloured bottle’ is eligible to be served at state banquets. In other words, a trade mark registration for ‘national liquor Moutai’ or ‘Moutai state banquet’ in class 33 would grant an excessively large umbrella for one specific product.

All in all, the terms ‘the national liquor’ and ‘liquor for state banquet’, rather than referring exclusively to one specific liquor, should (and actually do) represent a collection of several good liquors. And, of course, the question of what the national liquor or liquor for state banquets demands in terms of qualification or standards remains difficult to answer.

Photo: Shelly, Tian's kitten.

Read More Add comment

The facepalm trade mark case in China

By 0x000216

Read

0 Comments

The One Emoji We All Need

This Kat instantly liked the facepalm emoji when it was first released in 2016. It felt like some hidden inner voice was speaking out, echoing in her own ears. It had been something that had been missing for some time – an expression of frustration or embarrassment at the difficulties of a tough situation:

‘The iPhone is finally getting a facepalm emoji’ -- Telegraph

‘Apple gives the world what it needs, a facepalm emoji’ -- mashable

‘The One Emoji You've All Been Waiting For Is FINALLY Coming To Your Phone...’ -- popbuzz

‘HOERA! ER KOMT EINDELIJK EEN FACEPALM-EMOJI’ -- metronieuws.nl

...

Darwin (unusual citation alert) once said the following about the universal nature of expressions: ‘the young and the old of widely different races, both with man and animals, express the same state of mind by the same movements’. So true.

By now, according to emojipedia.org, there have been several graphic variants of the facepalm emoji available on major social media platforms:

Compared to the picture above, the Chinese facepalm emoji is a bit unique. It is inspired by a movie character played by Mr Xingchi Zhou, the master of comedy in China (see below). This emoji will be referred to as ‘smiling facepalm’ from this point on.

The smiling facepalm was designed by Tencent for its blockbuster platform WeChat (an instant messaging app comparable to WhatsApp) in 2016, with four sequential revisions:

This wonderful emoji is rich in connotation. It conveys discomfiture and awkwardness, but with the touch of a humorous seek-joy-amidst-hardship sentiment. Isn’t it great to ‘smiling facepalm’ someone in those ‘😫/😡/🤦/🤬’ situations? Although it expresses some emotions of dissatisfaction, the smile lightens the social tension. Because of its uniqueness and practicability, this all-purpose emoji has rapidly become one of the best-loved and most widely used emojis in China.

Uninvited Blatant Infringement

On 21 November 2017, Zhaoping Jin (‘Jin’) filed a trade mark application for ‘smiling facepalm’ in China (see below) for merchandise such as shirts, baby clothing, scarves and hats in class 25.

Jin's application, no 27608754

Following a preliminary examination, Jin’s application went into a notice period on 13 August 2018, which sparked an outcry of IPR infringement and squatting in the Chinese IP community.

Jin disagreed with the criticism. In an interview, he said that, as the owner of a clothing-trading company, he has always sought trade mark protection for the patterns printed on the clothes by his company. As to the facepalm pattern, he had been using it on his products for almost two years, and therefore thought he should protect it as a trade mark to prevent future trade mark squatting on rivals’ clothing products. Pressed by the reporter on whether he had known Tencent was in possession of the said emoji, Jin replied, ‘This emoji was not so popular when I started using it’. In addition, since he had only applied for the goods in class 25, he believed it ‘would not be precluding Tencent (the owner of WeChat), or the netizens and WeChat users, from using the facepalm emoji’.

Tencent filed a notice of opposition to the Trade Mark Office (‘TMO’). Jin’s application was rejected because of its infringement upon Tencent’s prior copyright.

Article 32 of the Trade Mark Law of China:
No applicant for trade mark application may infringe upon another person's existing prior rights, nor may he, by illegitimate means, rush to register a trade mark that is already in use by another person and has certain influence.

Comment

The case is not complicated, yet this Kat finds it a little bit annoying. Statistics show that by 2018, WeChat had had 889 million users. Who would have thought that anyone other than Tencent could even try to register as a trade mark such a widely used emoji?

Tencent got involved in the dispute passively. According to the Trade Mark Law of China, prior rights, such as copyrights, do not raise the TMO’s ex officio examination. Thus, the holder of prior rights or the interested party must take initiatives by themselves to start the inter partes proceeding, which costs time and money. This is not a problem but rather a common practice in many other jurisdictions as well.

Many hold that there is an inadequacy in the current Chinese legal framework, which, during administrative procedures, is incapable of providing a direct basis for the ‘winning’ party to get monetary awards for their costs. The infringers, whether intentional or unintentional, only need to pay very little cost to seek private gain.

Despite that the right holders may bring a separate civil action in the courts, the related cost rises substantially at the same time -- 🤷🏻‍♀️

Read More Add comment

Nexus

‘Day day up’ trade mark case and two English systems in China

China introduces new regulation tackling bad faith trade marks… and who is Jing Hanqing?

Beijing IP Court: Moutai is excellent, but not exclusively so

The facepalm trade mark case in China

Recent Posts

Facebook