In recent years, preemptive registration of famous trademarks oversea became common. Incidents such as the preemptive registration of Zhenjiang Vinegar trademark in Korea and that of Wangzhihe Trademark in Germany would often appear in newspapers. Preemptive registration has become a severe challenge for Chinese enterprises to enter the world market. On August 31st this year, the Trademark Office of the State Administration for Industry and Commerce posted a trademark preemptive registration warning on its official website. The warning received extensive attention within the industry. The warning pointed out that a businessman from Chile applied for the registrations of over 120 Chinese toy companies’ brands and trademarks, under his own name, at Chile’s National Institute of Industrial Property. The majority of the registrations involved type 28, toys and related products. Toy and gift companies in Chenghai District of Cantou, Guangdong, were the main victims.
As the worldly famous toy and gift production base, Chenghai is named the “City of toy and gift of China”. Toys from Chenghai are exported to more than 140 countries and regions in Europe, America, Middle East, and East Union. If such preemptive registration succeeded, it would hinder the export of products from related companies of China to Chile and surrounding countries and markets and would harm the interests of those companies. The Trademark Office suggested in the trademark preemptive registration warning that the relevant companies should claim their rights according to the local legal terms and administrative procedures.
After the Trademark Office issued the warning promptly, the relevant governmental institutions granted great attention. They immediately coordinated rights protection procedures, formed rights protection delegation to be sent for Chile, and hired professional legal consultants. Before their departure, the delegation conversed with Chenghai Toy Association and each of the involved companies in several occasions and collected the documents required for rights protection, which included trademark certificates, proof of trademark use and sale, and the records of the export destinations and market shares of the relevant products.
Ning Lizhi told the reporter that, according to the nature and different possibilities of the cases, the delegation made prediction for all the potential scenarios before their arrival in Chile and produced several strategies. Their solid evidence materials, coherent legal reasoning, and flexible negotiation schemes laid the foundation for the negotiations. China’s delegation defended their bottom line and made appropriate claims. The delegation handled each detail with excellent professional skills and honest and friendly attitude, achieving satisfying result.
On October 16th, the head of Nanyue Patent and Trademark Agency, Yu Feifeng and the legal representative of the Chilean trademark preemptive applicant represented the Chinese companies and the Chilean trademark preemptive applicant, respectively, signed on the coordination agreement, printed in both Spanish and English.
According to Ning Lizhi, the Chilean trademark applicant agreed to transfer the Chinese trademarks that he preemptively registered in Chile to relevant Chinese companies gratuitously and to return all of the 130 preemptively registered trademarks. As of now, almost 50 trademarks have entered return procedures and other preemptively registered trademarks will, one by one, enter return procedures based on the agreement.
