China: Dealing With Unwanted Fame

Trademark right is only valid in certain jurisdiction(s) but reputation of a brand is boundless. As China's economy develops, the consumption level of Chinese consumers becomes higher and higher. Moreover, the rapid development of internet also makes the Chinese consumers know more and more about the worldwide brands. Chinese consumers' understanding of foreign brands might be beyond your imagination.

In July 2015, a consumer bought from mia.com (hereinafter "MIA") a "Betta" feeding bottle which is imported from Japan. MIA is a large-scale online shopping website mainly selling imported baby products. However, the consumer found that the feeding bottle bought from MIA is a little different from that he bought from the Japanese official website of "Betta" although the overall appearance and package of the two are basically same as each other. For example, the manufacturer shown on the feeding bottle from MIA is "Betta co., ltd.", while as the manufacturer shown on the official website of "Betta" and on the feeding bottle bought from the official website is "ZOOM.T.CO.,LTD."(hereinafter "ZOOM T"). Thus, the consumer suspected that the feeding bottle bought from MIA is fake and requested to return it to MIA but such request was rejected by MIA. The consumer then published this matter on the internet and caused a great impact.

On August 4, 2015, MIA issued a statement announcing that the "Betta" feeding bottle it sold is genuine, under the authorization of the trademark owner.

On September 18, 2015, ZOOM T announced that the "Betta" feeding bottles sold by MIA are not their products.

On September 20 and 22, 2015, MIA announced twice to argue that it purchased "Betta" feeding bottles from suppliers authorized by the trademark owner. MIA also said that the problem of suspicion of fake products was due to the scramble for the trademark right of "Betta".

Whether they are fake or not? We analyse it in the following aspects.

1. Which feeding bottle from different manufacturers is what the consumers really want to buy?

There is no doubt that the consumers want to but the "Betta" feeding bottles produced by ZOOM T. MIA also admitted this in its statement of August 4, 2015. Although there is scramble for the trademark right of "Betta" in China, the real holder of the trademark "Betta" is ZOOM T.

2. Whose authorization did MIA get to sell and whose "Betta" feeding bottles did MIA sell?

According to the statement of MIA on August 4, 2015, the chain of the authorization of MIA is as follows.

Betta co., ltd.→Betta Infant Products (Beijing) Co., ltd. (hereinafter "Beijing Betta")→ MIA

MIA also showed a statement from Beijing Betta to support this chain of authorization. It was Beijing Betta who imported the goods of Betta co., ltd. and supplied the same to MIA.

However, in September, 2015, after ZOOM T denied the authenticity of the "Betta" feeding bottles on MIA, MIA published another chain of authorization.

ZOOM T → D company → W company → MIA (period of validity of authorization is from April 1, 2014 to October 31, 2014)

Concerning the second chain of authorization, MIA showed official documents of authorization as evidence for the authorization from ZOOM T to D company, and then to W company, but there was only a 20th April 2014 purchase contract between W company and MIA.

MIA also said that there was scramble for the trademark right of "Betta" in China and ZOOM T had not acquired trademark right for this mark in China. The reason that ZOOM T's trademark applications were rejected was the prior applications owned by a company called Beijing Yisaisi International Trading Co. Ltd. (hereinafter "Beijing Yisaisi"). It was because the trademark right of "Betta" was not ascertained then that its supplier W company purchased goods from Beijing Yisaisi during the period of October 31, 2014 to September 1, 2015.

Via online investigation, it is known that Beijing Betta and Beijing Yisaisi are owned by the same persons, namely, these two companies are actually the same one. With respect to "Betta co., ltd.", nothing is discovered in Japanese websites, so it could be a paper company controlled by Beijing Betta and Beijing Yisaisi. MIA also mentioned in its statement that Beijing Yisaisi might have entrusted Chinese companies to produce "Betta" feeding bottles.

Conclusively, MIA had sold both of the following two kinds of "Betta" products:

  • Fake: "Betta" products manufactured by Betta co., ltd. and imported by Beijing Betta/Beijing Yisaisi;
  • Genuine: Authorized "Betta" products manufactured by ZOOM T.

3. Who owns the trademark right of "Betta" in China?

In respect of the goods "feeding bottles" in International Class 10, the earliest trademark application is trademark No. 9370942, which was filed on April 21, 2011 and co-owned by two Shanghai companies. This mark was opposed after it was preliminarily approved and published. Surprisingly, according to the adjudication of Chinese Trademark Review and Adjudication Board (CTRAB) on the appeal against the opposition to this mark, which was published in the statement of MIA on September 22, 2015, the opponent was not ZOOM T, but Beijing Yisaisi. The CTRAB opined that this mark is a piracy of Beijing Yisaisi's prior influential mark and thus rejected the registration of this mark. However, just like the consumers of MIA did, the consumers bought Beijing Yisaisi's fake "Betta" feeding bottles because they thought these feeding bottles were produced by a famous Japanese manufacturer and then imported to China from Japan. So, there comes a question that the influence acquired by Beijing Yisaisi from producing and selling the fake "Betta" feeding bottles, should belong to which party, ZOOM T or Beijing Yisaisi?

Beijing Yisaisi owns near 200 marks in China. On May 6, 2011, it filed its first application for "Betta" class 10 in respect of feeding bottles and since then it filed applications for both "Betta" and its corresponding Chinese character mark in many classes. Its "Betta" marks were more than 50 and the corresponding Chinese character marks were more than 20. The registration of "Betta" in class 10 with the earliest application date was No. 15700142, filed on November 14, 2014 and got registered on January 14, 2016 and there was no record of opposition until this article was completed. If no opposition was filed against it, ZOOM T's sale of "Betta" feeding bottles will constitute infringement upon Beijing Yisaisi's trademark right.

Besides the "Betta" marks and the corresponding Chinese character marks, Beijing Yisaisi also filed applications for "ZOOM T" and "ZOOM. T. CO., LTD." in Japanese characters. Obviously, Beijing Yisaisi clearly knew the relationship between ZOOM T and the "Betta" mark.

In addition, Beijing Yisaisi filed trademark applications for other famous mother and baby brands, such as "NUK", "BABY BANANA", "THINKBABY" and "PAPAGINO". Beijing Yisaisi also filed trademark applications for the Japanese company name of PAPAGINO INC. there was also a "PRADA" mark among the trademark applications of Beijing Yisaisi.

4. What can ZOOM T do?

  • Taking actions against Beijing Yisaisi's "Betta" marks and the related marks as soon as possible. The actions may include opposition, announcement of invalidation or three-consecutive-year non-use cancellation.

    According to the current information, it seems that there is no direct business relationship or contact between Beijing Yisaisi and ZOOM T Therefore, ZOOM T can claim, in respect of feeding bottles in class 10 and the similar goods, the reputation of its prior mark and Beijing Yisaisi's bad faith in the oppositions or announcements of invalidation, by relying on Aricle 13 of Chinese Trademark Law (prior well-known status) and Article 32 of Chinese Trademark Law (prior influential status and the bad faith of Beijing Yisaisi) . It might be difficult for "Betta" to be recognized as well-known mark in China, and there will be larger chances of success if Article 32 is claimed.

    ZOOM T's "Betta" mark is stylized to a certain extent. If such stylization was created by ZOOM T or ZOOM T got the copyright of it through other ways, prior copyright can be claimed according to Articles 32 concerning Beijing Yisaisi's trademarks with the same stylizaiton. Since copyright has no restructions on specific goods or services, if ZOOM T's copyright to the special font of "Betta" can be recognized, it may overcome prior marks in respect of dissimilar goods/services.

    As we can know from the part 3, Beijing Yisaisi filed a lot of application pirating famous brands, particularly mom and baby product brands. Such activity (trademark registration acquired by unfair means) may be prohibited according to Article 44 of Chinese Trademark Law. ZOOM T can unite with the other companies whose trademarks were also pirated by Beijing Yisaisi to contact the Chinese Trademark Office together to state the said situation, which might increase the chances of success.
  • Filing its own trademark applications in respect of its main products and related goods/services

    According to its official website, ZOOM T started the production of "Betta" feeding bottles in 1995. However, its first trademark application for this mark in Japan was filed on June 25, 2013, and only in class 10. On the other hand, Beijing Yisaisi started to file "Betta" related trademark applications in China on May 6, 2011 and filed around 80 trademark applications related to "Betta" in more than 20 classes. It is obvious that ZOOM T's trademark protection is not enough in either quantity or scope.
  • Starting positive trademark watching

    Beijing Yisaisi's trademark application of "NUK" was finally rejected due to opposition. Announcement of invalidation was also filed against Beijing Yisaisi's trademark registration of "BABY BANANA". If positive trademark watching is in process, once the pirated a mark is published or registered, the true owner of the mark can take actions in time. Obviously ZOOM T did not do work well in this regard.

5. What can we learn from this case?

Among the Chinese consumers, a lot of people praise more the foreign brands or the products imported from foreign countries than the domestic brands. They know the foreign products through their relatives, friends or the internet, and then buy these products from foreign countries through a lot of ways. For examples, they buy these products when travelling abroad, or entrust the Chinese people living in foreign countries (purchasing agents) to buy these products and then post the same to China, or directly buy these products from foreign online shopping websites and then have the products posted to China directly by the online shopping website or via transfer of the express companies. Among these methods, the purchase agent services greatly affect the promotion of foreign brands in China. To increase their sales revenue, these purchase agents made efforts in promoting the foreign brands in China, which happened to meet the needs of a lot of the Chinese consumers who want to buy foreign products and thus makes a lot of foreign brands very famous in China. "Betta" case is just a brand of this kind. ZOOM T did not pay enough attention to the Chinese market and did not know that its brand had become so famous in China due to the sale in unusual ways. Fake "Betta" feeding bottles produced/imported by Beijing Yisaisi, which were sold in large scale in several big online shopping websites in China, might have an equal or even larger sale figure as compared to that of the genuine.

Under such circumstances, a lot of foreign companies might have not started business in the Chinese market or have just sold on a small scale in China, and they do not know that the Chinese consumers may know their marks, not to speak the influence of their mark in China. What's more, some brands that are not very famous in their own countries, thanks to the purchase agent services and oversea online shopping in China, become much more famous in China than in their own countries. Therefore, the trademark protection of these companies is far from enough. This author hopes that through this case, more and more foreign companies, especially the middle and small-sized companies that have not enlarged its business in China and the companies whose products can easily be carried or posted or for daily use, can learn the importance and necessity of trademark protection in China.

This article first appeared in China IP Focus 2016, published by Euromoney Institutional Investor (jersey) Ltd.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
CCPIT Patent & Trademark Law Office
HFG Law & Intellectual Property
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
CCPIT Patent & Trademark Law Office
HFG Law & Intellectual Property
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions