Recently, the author has encountered a number of cases of trademark rights holders enquiring about trademark conflict issues, including trademark infringement cases, administrative trademark litigation cases, and others. Their common point was the rights holders’ lack of a comprehensive plan or arrangement regarding their trademarks, a point that drew their attention only after the occurrence of a conflict.
However, the conflict counterparties in these cases had already duly prepared their trademark strategies before the occurrence of the conflict. Accordingly, even if a rights holder manages to prevail in the individual case, if consideration and arrangement do not begin from an overarching trademark strategy, it is difficult to ultimately secure a brand strategy victory.
There is an old saying in China, “Don’t dig a well when facing thirst, it is better instead to prepare for foul weather before it rains,” which speaks to the importance of having a strategy in advance. This principle is likewise applicable to trademark strategy. In a trademark infringement dispute in 2016, the Guangdong High Court, at appeal, ordered New Balance to pay the plaintiff, a Chinese company, compensation in the amount of RMB5 million (US$723,000).
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Frank Liu is a partner in the Shanghai office of Jincheng Tongda & Neal
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