Overview:

The matter of trademark registration for the Australian trademark "" that I represented ultimately led to the transfer of the trademark to Weilong through warning letters, negotiations, and other means, avoiding the complex and costly invalidation process.

Case details:

Luohe Weilong Trading Co., Ltd. and Luohe Pingping Food Co., Ltd. are our agent clients, and their "Weilong" series trademarks are well-known. Weilong Food was founded in 1999 and has more than 100 single products including various sizes of gluten, mouth cooked, and konjac refreshing. Its classic products are popular and have successfully led the spicy snack industry to the world.

At the beginning of 2021, Weilong discovered that its "" trademark had been preemptively registered by a third-party company on Class 29 and Class 30 goods in Australia, and the trademark had been registered for five years. This trademark is completely identical to the trademark that our client has been using for a long time, which has infringed on our client's copyright, and its malicious registration of the trademark used by the client for a long time constitutes malicious registration of the trademark. The company claims to be the owner of the "Weilong" series trademark and has sold numerous products labeled with the trademark locally. In response to this, our client intends to take measures to crack down on the unauthorized registration.

Given that Australia belongs to the common law system rather than the civil law system, its judicial procedures differ from ours to some extent. For example, invalid applications need to be filed by interested parties in the federal court, which is a judicial procedure and mostly a multi turn system. Compared to China, its invalidation procedure is complex and expensive. Therefore, we suggest that the client send a warning letter to the other party before filing an invalidation application, stating their infringement facts against our client and requesting them to immediately stop infringing, in order to encourage the registrant to actively seek negotiation, reach a transfer, or abandon the dispute procedure. Under the warning letter, we successfully contacted the registration party. After a series of negotiations, the other party agreed to transfer the trademark to our client's name due to their malicious registration, avoiding the complicated invalidation process in the future, and ultimately transferring the trademark to the client's name at a lower cost.

Case analysis:

In recent years, it has been common for Chinese companies to have their trademarks registered in overseas markets, and once they are registered, they have to pay huge costs for safeguarding their rights. And Australia is also an important market, coupled with Australia being a member of the Regional Comprehensive Economic Partnership (RCEP), many domestic companies have identified the region as a key market.

Therefore, it is recommended that domestic customers try to follow the principle of "the market remains unchanged, the trademark comes first" before entering the domestic market, in order to avoid the passive situation of subsequent registration.

The timely and effective application and layout of overseas trademarks is always one of the most economical and effective measures to prevent unauthorized registration. It is recommended that customers apply for and layout their own trademarks in a hierarchical manner, balance costs and benefits, and achieve a forward-looking defense effect. In addition, prior to application, queries can be made, including but not limited to the search of prior similar trademarks, Internet search for the use of such trademarks, search of trade names and domain names, etc. If the applicant encounters rejection or examination opinions from Australia, they can reply to the examination opinions within 15 months. During this period, they need to actively provide their opinions and corresponding evidence to the local intellectual property office to strive for the approval and registration of their trademark.

After applying for trademark registration, it is necessary to monitor the trademark under one's name in a timely manner. If any cases of unauthorized registration are found, action should be taken promptly. In daily business, it is recommended to promptly retain evidence of use, including but not limited to import and export contracts, sales contracts, bills of lading, sales receipts, etc., and to promptly retain signed documents and correspondence with local distributors and agents. If there is a situation of agents or distributors rushing to register, measures such as sending warning letters, negotiations, raising objections, invalidation, etc. can be considered to pressure the registering party to facilitate trademark transfer and timely resolution of the trademark rush.