Protection of Time-honored Brands under Modern IP System

2010/08/09,By Zhou Yi, China IP,[Patent]

 In 2006, attorney Shang Jiaquan from the Beijing Globe Law Firm had his first time-honored brand case: providing legal consultations to an old restaurant in Niujie Food Court.
  As an IP lawyer, Shang Jiaquan followed the orthodox IP knowledge and concepts in dealing with IP problems. But when he encountered time-honored brand problems, he felt that the problems were both simple and complicated: It was simple because the legal relationship is straightforward; it was complicated because the time-honored brands, grown out of old societies, are sort of square pegs in the round holes of the modern IP protection system.
  “The time-honored brand is neither exclusively a legal nor an IP subject matter,” said Mr. Shang to the journalist. “The unique aspect of time-honored brands that set them apart from modern IP subject matters is the degree of brand awareness; yet, brands are somewhat connected with the trademarks, and are thus the proper subjects of IP protection for the corporate branding interests.”
  This, however, is not clear to all brand owners. Many of the time-honored brand successors confuse trademarks with brands, and weigh the importance of brand protection more heavily than trademarks. “In terms of protection, trademarks are obviously better protected than brands. And brand conflicts can only be solved in court through trademark litigation. There is no other channel of legal protection,” said Mr. Shang.
  The 2007 case of registering time-honored brands by the general manager of Jiumen Food Court taught the time-honored brand owners a visual lesson of trademark protection for time-honored brands. Although brand inheritors finally took back their trademarks, it was all due to the government intervention, said Mr. Shang. “Without a registered trademark, it is almost impossible to settle such cases by legal means.”
  According to Mr. Shang, the difficulty does not lie in showing proof, but in establishing legal basis. This is especially so if the registrant is a large business.
  After several years of development, many time-honored brands have secured their own trademark registrations, and some have obtained well-known status for their marks. However, there are still many people harboring desires for the time-honored brands. Overseas trademark squatting is one example. By overseas squatting, the squatters grab the Chinese market and authorize Chinese enterprises to produce under the name of “foreign brands.”
  “Surely, this is not a problem exclusive to the time-honored brand names. Many large enterprises are facing the same trouble. The particularity is that the time-honored brands are usually of limited sizes and face more challenges in protecting their rights than do larger businesses. Moreover, these domestically known brands, mostly unregistered, are difficult to protect except under international treaties for well-known marks, which these time-honored brands are not,” said Mr. Shang. “The odds of Wangzhihe’s winning in the trademark lawsuit case are one in a thousand.”
  Besides overseas squatting, domestic infringements also emerge endlessly. Some use time-honored brands as their company names; some register trademarks similar to the time-honored brands; and some simply call themselves the time-honored brands.
  Despite the continuous efforts in confronting infringements, most time-honored enterprises are too limited in scale and too weak in brand protection, which also dictates their limited activities in IP protection.
  “All of the time-honored brands share two common characteristics. Firstly, they are limited in scale. This is because they usually engage in miscellaneous daily goods, mostly food and clothing. Secondly, they are usually limited to a certain region,” Mr. Shang said.   
  The small scale means they cannot afford to safeguard their rights. It seems that until now, none of the time-honored brands have established an IP protection department. The geographic scale limits their interest in seeking protection outside their home marketing range.
  “But some time-honored brands, like Ruifuxiang (silk) and Zhangyiyuan (tea), think highly of IP protection.  We provide them almost the same services we do for other large enterprises: establishing IP strategies, conducting trademark monitoring and defensive registrations, and cracking down on counterfeiting offenses. We have evolved from solving the problem after it occurs to giving overall considerations and taking preventative precautions at present; we have greatly changed our way of working and have achieved great progress,” said Mr. Shang.

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