Keywords: China, intellectual property,
trademark, patent, PCT International Patent System, Madrid System,
In addition to domain name and trade mark scams from China,
there are now dishonest solicitations with regard to International
Trademark Registrations under the Madrid System and patents filed
under the PCT International Patent System. Patent and trade mark
owners - beware!
In the past few years, IP scams coming out of China have
expanded from domain names to trade marks. Please see our previous
"Domain Name and Trade Mark Scams in China" published
on 25 March 2011. Recently, inbound scams from overseas to Chinese
entities are discovered.
On 25 August 2011, the Trademark Office in China issued a notice
of caution to alert applicants and their agents who had filed
applications or obtained registrations under the Madrid System for
the International Registration of Marks that they might receive
letters, facsimiles or emails with dishonest and unofficial
solicitation for payment of fees from overseas organisations or
entities who held themselves out to be official or quasi-official
This caution notice advises that the following features are
often found in a dishonest solicitation:
Use of names, abbreviations or signs which are identical or
similar to the World Intellectual Property Organization
("WIPO") or other foreign trademark offices;
Incorporation of the Madrid International Registration Number,
applicant's details, specimen of trade mark and specification
(all being searchable information available online in the
Request for payment of fees to handle registration, renewal or
provide monitoring service;
Request for payment of fees for other purposes.
The WIPO has also issued a similar notice of caution to alert
right owners about scams targeting at patents filed under the PCT
International Patent System. The WIPO's notice reads as
"It has come to the attention of the International Bureau
that PCT applicants and agents are receiving invitations to pay
fees that do not come from the International Bureau of WIPO and are
unrelated to the processing of international applications under the
PCT. Whatever registration services might be offered in such
invitations, they bear no connection to WIPO or to any of its
official publications. The invitations often identify a particular
PCT application by its international publication number (e.g., WO
02 xxxxxx), publication date, title of the invention, international
application number, priority information and IPC symbols."
Trade mark and patent owners should be cautious of suspicious
solicitations. Before responding to any suspicious communications,
we recommend that you should consult or verify with your own IP
agents, the relevant government IP office and/or the WIPO, as the
case may be.
Mayer Brown is a global legal services organization
comprising legal practices that are separate entities (the Mayer
Brown Practices). The Mayer Brown Practices are: Mayer Brown LLP, a
limited liability partnership established in the United States;
Mayer Brown International LLP, a limited liability partnership
incorporated in England and Wales; Mayer Brown JSM, a Hong Kong
partnership, and its associated entities in Asia; and Tauil &
Chequer Advogados, a Brazilian law partnership with which Mayer
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This article provides information and comments on legal
issues and developments of interest. The foregoing is not a
comprehensive treatment of the subject matter covered and is not
intended to provide legal advice. Readers should seek specific
legal advice before taking any action with respect to the matters
discussed herein. Please also read the JSM legal publications
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The Indian Patents Law categorizes certain inventions as not inventions. Among these, the most discussed category is the Section 3(d), which prohibits patenting of ‘the mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance’.
The Intellectual Property Appellate Board (IPAB) has recently rejected the appeal of Jones Investment Co. Inc., A US Company, challenging the order of the Registrar of Trade Marks, dismissing the opposition filed by US Company against the registration of trade mark JONES label by Indian party trading as Vishnupriya Hosiery.
The term "well-known trade mark" has been defined in the Trade Marks Act, 1999 and refers to a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first mentioned goods or services.
The Intellectual Property Appellate Board (IPAB) recently passed
an order for the removal of a trade mark (Tiger Brand label
registered under No. 1330146 in class 34) from the Register of
Trade Marks in a rectification petition being heard by it.
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