China has passed a new trademark law that becomes effective May 1, 2014. The new law includes:
- A requirement that trademarks shall be registered and used “by the principle of honesty and credibility;”
- Some important changes to the trademark application and appeal processes; and
- As discussed here, several notable provisions designed to improve trademark enforcement in China.
A. Mechanism designed to discourage trademark hijacking by business partners
Trademark “hijacking” in China refers to the situation in which a third party registers a company’s established trademark in China, often before the company enters the Chinese marketplace, then attempts to sell the trademark registration to the company when the company begins conducting business in China. Trademark hijacking has been a serious problem in China and, in some cases, trademarks have been hijacked by individuals assisting the legitimate trademark owner in manufacturing or otherwise.…
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The ability to register a trademark in the member countries of the European Union (currently 30) in a single application has been available under the Community Trademark system (CTM) since the mid-1990’s. The basic fee (900€, currently about $1,215US) for filing a CTM covers the cost of filing in up to three classes.1
The European Commission (EC) proposed revisions to the current CTM system in March 2013. Among other revisions was a change to the fee schedule. Under the proposal, fees would be payable per class — 775€ for one class, 825€ for two classes and 900€ for three classes. Renewal fees are proposed at 1,000€ for one class, 1,100€ for two classes and 1,250€ for three classes.
The EC’s proposed revisions should assist most brand owners. Under the existing system, trademark owners typically select coverage in all three classes even though the mark may only be used in a single class. For example, a business may include class 16 (paper goods) even though it only uses paper goods for marketing the actual product. By moving to a one-class system, businesses will pay less when seeking to obtain protection for only one or two classes. In addition, proposed marks will face less barriers from unused marks on the register in classes arbitrarily picked under the old system. Lastly, the need to file unnecessary oppositions (actions to remove unused marks) should decrease.
While most of the EC’s proposed revisions must be adopted by the European Parliament and the European Council, the …
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The Fifth Circuit Court of Appeals recently held that an arbitrator did not exceed his powers when he expanded an eight-year license to use a video game’s trademarks into a perpetual license to use all the intellectual property rights associated with the game. See Timegate Studios, Inc. v. Southpeak Interactive, L.L.C., ___ F.3d ___, 2013 U.S. App. LEXIS 7184, No. 12-20256 (5th Cir. Apr. 9, 2013).
Under the Federal Arbitration Act, an arbitrator does not exceed his powers unless “he has utterly contorted the evident purpose and intent of the parties—the ‘essence’ of the contract.” Timegate Studios, slip op. at 9. The Fifth Circuit found that the arbitrator’s remedy of a perpetual license was “rationally rooted” in the agreement between the parties and therefore reinstated the arbitrator’s award after the district court had vacated it.
In 2007, Timegate Studios, Inc. (“Timegate”) entered into a 46-page video game publishing agreement with Gone Off Deep, L.L.C. d/b/a Gamecock Media Group (“Gamecock”). The agreement obligated Timegate to develop a futuristic military-style video game entitled “Section 8,” and it obligated Gamecock to publish the game. As the publisher, Gamecock agreed to provide most of the investment funding for the game’s development and to manufacture, market, distribute, and sell the game after its development.…
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