Due to unlimited of continued economic growth, business proprietors foresee more opportunities to expand their businesses in offline and online platforms. Therefore, registering their trademarks is critical issue that the business proprietors need to put in their minds to protect their trademarks and prevent them from trademark infringements in the marketplaces.

However, some enterprises have never realized how important of registering their trademarks. Then ,it seems leave the room for hijackers and infringers to take an advantage of this circumstances. Especially in China, there are many trademark hijacking and infringement cases. For instance, Apple Inc. has lost a trademark case in China. In fact, that IPHONE has been known that it is a trademark of Apple Inc. but since 2010, Xintong Tiandi has registered IPHONE trademark in class 18 related to handbags and leather goods.

In 2013, Apple Inc, filed a IPHONE trademark application in class 9 related to electronic goods. Apple Inc. is dissatisfied that Xintong Tiandi’s IPHONE trademark has been registered in class 18 for leather goods. Although Apple Inc. tried several times to beat this registered trademark, but the court stated that Apple Inc. could not prove the solid evidence that their iPhone was a well-known brand in China before Xintong Tiandi’s IPHONE trademark filed their trademark application in 2007 . Therefore, it can be seen that Xintong Toandi has tried to lure the customer to believe that they are selling the products relating to Apple Inc.

Furthermore, Chinese hijackers had gone far ahead of laws. They inexplicably created certain tricks to take advantages of someone else’s business. In Bao Shifu case , Yishang Co.,Ltd. has maliciously imitated “Bao Shifu” owned by Beijing Bao Caisheng Co.,Ltd and they exploited the gaps of the original Bao Shifu coverage. In the fact, the original Bao Shifu is only registered in class 30, covering cakes and bread goods that left the path for Yishang to register the imitated trademark in the class no.32 relating coffee and beverages and class no. 43 relating bakery shop. After that Yishang has setup the franchise shops in many cites that lead the public understand that bakeries have been baked from the original Bao Shifu. As the result, Beijing Bao Caisheng Co.,Ltd has lost business profits.

Figure 1 : Bao Shifu

Figure 2: Identical trademark

Similarly, in the Emerson Electric Co., case, the CNIPA has tried to attack the trademark hijacker and infringers with imposing monetary penalty and punishment. In fact, Emerson Electric Co., manufactured and distributed food waste disposers under InSinkErator brand and 爱适易 (AI SHI YI) brand. After that Xiamen Anjier and Xiamen HNBC, are in the same industry of Emerson Electric. They had been tried to file several trademark applications by using trademarks of Emerson Electric Co., and similar trademarks of Emerson Electric Co., within the same and identical classifications. Obviously, such actions are not just to distract the trademark owner’s right to register his/her trademark, but the genuine intention of these companies is to obstruct Emerson Electric Co.,’s business .

Figure 3: Emerson’s trademark

Figure 4: Xiamen Anjier and Xiamen HNBC Trademarks

As the mentioned case, it indicated that CNIPA tried to set the laws and criteria to prevent such a trademark hijacking and infringement in China. Therefore, ATPSERVE foresaw the risks and would like to advise entrepreneurs or trademark proprietors who intend to extend their businesses abroad to register their trademarks or file trademark application before doing business in that country , especially in the countries that have high risk of trademark hijacking. Still, ATPSERVE would like to suggest entrepreneurs or trademark proprietors as the following :

1. Registering your trademark in countries before you start to trade or cooperate your business. Still, please elaborately consider the goods and services that intend to be protected.

2. Keep searching your trademark name on the search engine, social network platforms and online shopping platforms to monitor that if someone is illegally infringing your trademark and your project.

3. In case of trademark infringement, the trademark proprietor is obliged to take action to withdraw the trademark. or take legal action to prevent damage of their reputation and income

4. If you have business partners or have a trademark license with outsider, please examine the trademark license agreement to ensure that it covers the right to use the trademark and the duration of the license. Be aware that lot of trademark owners who lose the opportunity to register their trademarks in trading partner countries because the trading partner has registered the trademark without permission (Trademark Hijacking).

Refference

– Apple loses trademark fight over ‘iphone’ name in China (2016) BBC News. BBC. Available at: https://www.bbc.com/news/business-36200481 (Accessed: March 2, 2023).

– Bun fight | (2018) Week In China. Available at: https://www.weekinchina.com/2018/06/bun-fight-2/ (Accessed: March 2, 2023).

– China: Milestone reimbursement of expenses of trademark administrative actions (no date) International Trademark Association. Available at: https://www.inta.org/perspectives/ip-snippets/china-milestone-reimbursement-of-expenses-of-trademark-administrative-actions/ (Accessed: March 2, 2023).