With trademark clearance, risk assessment and overall filing as key tasks in their daily work, trademark legal counsels are highly concerned on how to efficiently conduct trademark clearance, assess risks of registration and use, and carry out overall filing in line with the business strategy.
In order to enable the legal personnels of member companies to provide better trademark legal service for their employers in the above-mentioned field and based on the feedback from QBPC members at the beginning of 2023, the Quality Brands Protection Committee of China Association of Enterprises with Foreign Investment (QBPC) Legal Committee held a seminar in Shanghai on July 28. Lawyer Cai Ye and Director Li Bo shared their perspectives on the workshop. Legal Committee Chair Michael Yu acted as the moderator, and more than 60 QBPC members attended in person or online.
Michael Yu
Cai spoke on the topics of "Interpretation of Distinction Table for Similar Goods and Services in the Case of FMCG Products (Daily Chemicals and Food)" and "Trademark Search and Risk Assessment". She initially provided a brief history of the development of distinction table as well as common problems in its application and explained its application in administrative cases of authorization and confirmation as well as in right protection cases through case study. Subsequently, Cai analyzed risk assessment issues related to trademark registration and use from the perspective of trademark determination of similarity, including the judgment basis of trademark identity or similarity, infringement risk, management risk, and the risk of trademark use on freebies, etc. She also explained the comparison between the old and new provisions of Article 4 of the 2019 Trademark Law through case study.
Cai Ye
Li delivered a speech on "Pre-application Strategies for Trademarks". In terms of logo selection, he explained the design of the logo, the selection of the application logo, the criteria for judging the general violation of trademarks, and others. Through a bunch of cases, he highlighted the conditions for trademark registration and the consequences of unregulated use of trademarks. In terms of selection of category and the item of goods and services, he suggested that the coverage should be based on the actual use of the goods or services and the significance of the trademarks. He also explained in detail the application and defense strategy for non-standardized goods. In terms of trademark search before application, he explained the strategy and method of trademark search in six steps.
Li Bo
In the Q&A session, both speakers provided detailed answers to questions on how to search for trademarks efficiently, how to select the types of goods for non-standardized goods, how to assess the risk of using trademarks on freebies, whether trademarks could continue to be used after refusal, and the absolute grounds for prohibiting the registration and use of trademarks.
