Case Analysis of A Trademark Dispute
--- A Showcase of IPR Protection Scheme in China for International Enterprises

By Dr. Michael Liu, M.A., LL.M. (Münster), Attorney-a-Law, Partner of BRIGHT & RIGHT & BBAC Vice President
Ms Hua Lin, Diplom-Juristin (Münster), Attorney-at-Law, Partner of BRIGHT & RIGHT & BBAC Vice Secretary General

I. Case Description

A, an international enterprise from EU, has been cooperating with a local Chinese enterprise in producing the products locally in Xian, China and selling them in EU and the USA. The products of A carry the trademark “Star Grain” that has been registered in EU. B, another company from Malaysia, produces and sells the products of the same type as that of A. The products of B carry the trademarks “Golden Grain” and “Grain”, which have been registered in China for a few years. B is the opinion that A’s products with the trademark “Star Grain” have infringed upon B’s trademark “Grain” and launched an action against A’s products that were in the warehouse of A’s local partner in Xian, waiting to be exported to EU. And, as a result, A’s products were detained by the local administration bureau of Industry and Commerce. A is the opinion that he has not infringed upon B’s trademark, and he is determined to take measures to safeguard his IPR in China. What should A do?

II. Case Proposal

Having had the full information from A about the case, we have offered A the following complete package of strategic services to safeguard A’s IPR interests in China, which should be implemented at the same time:

a. Proceedings in the local administration bureau of industry and commerce
Deal with the legal proceedings, present facts and laws for the purpose of freeing the products detained as soon as possible. Pay attention to the question whether the sole manufacturing of the products by OEM constitutes the infringement upon the relevant IPR in China.

b. Communications with B
Communicate with B, find out the real intention and seek possible solution with B for the best interest of A.

c. Campaign against B’s trademark “Grain”
Initiate relevant proceedings to get rid of the basis for B’s claim against A, its trademark “Grain”, commonly called the “removal of the old trademarks”, which is the first key part in the whole IPR strategy.

d. Registration of A’s trademarks in China
Register A’s trademarks like “Star Grain” and other similar ones in China, commonly called the “establishment of the new trademarks”, which is the second key part for in the whole IPR strategy.

e. Other measures for the protection of A’s IPR in China
Analyze A’s whole business process to find other potential IPR problems in China, so that any future IPR problems could be avoided from the very beginning.

III. Service Principles
Many cases of international IPR-litigation handled by BRIGHT & RIGHT, have constantly confirmed one of BRIGHT & RIGHT’s service principles that competent legal counseling and services at the outset of business endeavors in China will avoid all the possible problems and save international businessmen a lot of time, energy and costs, so that the legitimate interests of international enterprises can be best secured in China.