Official Journal of the International Trademark Association. INTA 125 Years of Excellence. Vol. 93 January-February, 2003 No. 1

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1 Official Journal of the International Trademark Association INTA 125 Years of Excellence Vol. 93 January-February, 2003 No. 1

2 118 Vol. 93 TMR CHINA AND TRADEMARKS 中国 By Frederick W. Mostert * INTA cementing its co-operation with China so read the headline of the Economic Daily of March 1998, a Chinese newspaper for the business community in China. The article highlighted the well-received INTA delegation to Beijing, which met with high-level government officials, trademark owners and trademark lawyers. INTA has indeed cemented its co-operation with China over a number of years now. The meetings, seminars, forums and continued dialogue at all levels in Beijing, Shanghai, New York and Washington, D.C., especially in the last year, symbolise the depth of the ongoing exchange of ideas on trademarks between members of INTA in China and other parts of the world. Those of us participating in this exciting dialogue on the fundamental principles of trademarks count ourselves fortunate. It has been a fascinating and insightful learning experience. As far as can be determined, the first use of a trademark on a commercial product was Chinese in origin. As Mr. Shen Guansheng, a scholar on Chinese trademarks, points out, the earliest complete use of a trademark in China was during the Song Dynasty in the 9th Century, whereas the first proper use of a trademark in Europe only appeared in the 13th Century. This first trademark in China consisted of the following White Hare symbol depicted below. * Chief Intellectual Property Counsel of Richemont, London, United Kingdom, Regular Member of the International Trademark Association, and a Guest Professor at Peking University. He is a Past President of the International Trademark Association and served on the INTA Board from 1991 to 2001 and on various INTA committees. He is editor of the INTA publication International Trademark Treaties and Agreements and principal author and co-ordinating editor of the book Famous and Well-Known Marks An International Analysis. He is a WIPO Domain Name Arbitrator and serves on the Advisory Boards of the McCarthy Center for Intellectual Property and Technology Law, the Greenberg Trademark Institute, the British Walpole Committee and the Art Science Research Laboratory. Frederick gratefully acknowledges the kind assistance of Professors Zheng Shengli, Zheng Chengsi, Messrs. Fan Hanyun, Cao Zhongqiang and Chen Xuemin in the preparation of this article.

3 Vol. 93 TMR 119 Around the White Hare symbol are the words Liu s Needle Store in Jinan. The catchy slogan directly below the logo reads: Buy the best steel to make the best thin needle for family and commercial use, please remember White Hare. It is also noteworthy that the precursor to the trademark, the seal (typically used in antiquity to authenticate letters or products such as pottery), dates back to the 6th Century B.C. in China as it does in ancient Greece and Rome. Moreover, archaeologists recently announced that the earliest use of paper package advertisements in the world, dating back approximately 700 years, was found in an ancient tomb in Central China s Hunan Province. Of even greater interest are the different types of trademarks found on the packaging. The packaging included slogans, word marks, and certification marks. The use of inscriptions, the use of trademarks on commodities and the use of advertisements in commerce are all steeped in Chinese history. With such deep roots in the field of trademarks, it is no wonder that China is so active in the international field today. China has made a giant leap over the past fifteen years in protecting intellectual property. Chinese endeavours in this regard include an admirable readiness to adopt extensive legal principles to protect well-known marks; adherence to international treaties such as the Madrid Protocol and membership in the World Trade Organisation. Despite some problems with regard to enforcement, Chinese development in the field of trademark protection is impressive. China is regaining its trademark heritage and has become an active voice in today s international trademark legal community. Considering that one in five potential consumers is Chinese, it is clear that brands and brand equity will continue to have an enormous impact on China today and in the future. The current Deputy Director General of the Trademark Office, Mr. Fan Hanyun, recently emphasised: Well-known marks currently is a very important issue throughout the world including China. In this

4 120 Vol. 93 TMR regard, the ongoing dialogue on the principles surrounding the protection of well-known marks internationally with members of the International Trademark Association has been particularly helpful to my colleagues and I here in China. The relationship between the INTA and the Chinese trademark community has been a remarkably productive and pleasant one, especially in the last decade. I followed the history trail and found myself on an inspiring journey. In the last decade, INTA s Executive Directors, Robin Rolfe and Alan Drewsen, and the entire INTA staff have been instrumental in fostering a close relationship with senior government officials, academics, trademark owners, trademark lawyers and all those interested in trademarks within China. It is fair to say that they went above and beyond the call of duty: travelling extensively, spearheading innovative initiatives and planning various strategic meetings in China and elsewhere in order to ensure that the firm foundation on which the friendly relationships with the trademark community in China be strengthened even more. During our terms as INTA President, Nils Montan, Kim Muller and I participated in various meetings in China to continue the exchange of ideas surrounding trademarks. In 1987, several delegates from China attended the Annual Meeting of the Association for the very first time. It was also the first meeting to be held between officers of the Association and Chinese delegates. Subsequently, in 1992 Executive Director Robin Rolfe was invited to speak at an intellectual property seminar in Beijing where Chinese government officials, judges, legal scholars and educators attended a meeting sponsored by, among others, the PRC Agency for Science and Technology. A particularly significant event took place in January 1995, when Ms. Rolfe formed part of a high level delegation that met with senior Chinese government officials, including Madam Wu Yi, the Minister of Foreign Trade and Economic Co-operation of the People s Republic of China. Ms. Rolfe discussed at length the various issues surrounding the effective enforcement mechanisms for trademarks in China. This breakthrough meeting set a very constructive basis for many more such meetings in China in the years to come. It is noteworthy that later in the same year China deposited its instrument of accession to become a member of the protocol for the Madrid Agreement Concerning the International Registration of Marks. During these meetings, the State Councillor pointed out that INTA had acquired an expertise in trademark education and training programmes, which would be of enormous assistance to Chinese companies to educate and assist them in setting up company-based intellectual property management systems. The Councillor was greatly interested in INTA s work and in meeting with INTA members. This set the tone for the future relationship with INTA. It is no

5 Vol. 93 TMR 121 coincidence that training programmes and trademark management form the cornerstone of many a seminar co-hosted by INTA and the China Trademark Association that continue to take place on an almost yearly basis in China. As a follow-up, yet another INTA delegation met in Beijing with Chinese policy makers and trademark owners in Rather than focusing solely on the problems faced by INTA members when protecting their trademarks in China, the delegation emphasised the reality of the global village and explored why famous and well-known Chinese trademarks need to be better protected not only within China, but also outside of Chinese borders. Mr. Li Xiaokuan, the Deputy Director of the Trademark Office, was particularly interested in sharing thoughts on wellknown marks with INTA members and indicated that China had already made some strides in protecting well-known marks. The INTA delegation also met with the China Trademark Association, the China Trademark Office, the China Intellectual Property Society, the Chief Justice of the Intellectual Property Division of the Supreme Court of the People s Republic of China and the Customs General Administration. During a follow-up meeting the same year in Beijing, Mr. Chen Xuemin, an expert in trademark and domain name law in Beijing, pointed out a new problem facing Chinese trademark owners: the issue of domain names on the Internet. There were difficulties in domain name conflicts with such well-known Chinese marks as HAIER, CHINA-STONE and CHINA-TEX. Domain names once again formed the basis for a highly interesting discussion in Shanghai in October 2000, when Mr. Liu Zhijian of China s Internet Administrative Body discussed this topical issue during an INTA International Recruiting Roundtable. Following further delegations and, in particular, seminars cosponsored with the China Trademark Association and the Guangzhou Trademark Association in 2001, a wide range of topics were extensively discussed among trademark owners in China and members of the INTA. In particular, the management of international trademark portfolios was an issue highlighted by INTA s Vice President, Rhonda Steele. At the INTA Annual Meeting in San Francisco in the same year, the China Trademark Association and INTA jointly agreed to hold trademark seminars for Chinese trademark owners on a regular basis and this fruitful working arrangement has continued. No surprise, therefore, that this forging of a relationship between the China Trademark Association and INTA, led to 18 trademark-owning companies in China becoming members of INTA during 2002 a first for INTA in many respects. Consider also in this regard the statement of Mr. Wu Xiangwen made to the press as far back as 1999: The Chinese legislature is

6 122 Vol. 93 TMR expected to revise the Trademark Law soon in a bid to strengthen measures against serious trademark infringements... China s protection of intellectual property rights would definitely be strengthened after it joins the World Trade Organisation. It was accordingly good news for trademark owners in China and elsewhere to hear that the PRC became an official member of the World Trade Organisation on 11 December China also joined the Trademark Law Treaty in In this context, Professor Zheng Chengsi, Director of Intellectual Property Centre, China Academy of Social Sciences, aptly pointed out that: In the last fifteen years the trademark laws of China have come a very long way. I venture to say that in some areas China may become a leader in this field. During this process it has been from time to time helpful in discussing complex issues of international trademark laws with various members of INTA here in Beijing as well as in other parts of the world. The momentum continued with a series of meetings during More than 300 participants flew in from Asia and other parts of the world to participate in an INTA forum in Shanghai. The upbeat atmosphere was aptly reflected in this description that appeared in the INTA Bulletin: The buzz continued during the breaks with a great deal of energetic conversation and the vigorous exchange of business cards. A myriad of trademark topics was discussed ranging from how to combat counterfeiting to examination standards in the Trademark Office, to the procedures for managing portfolios offshore, and trademark licensing and cobranding. INTA has established a presence in China and has created a strong alliance with the China Trademark Association and other organisations through such meetings and other collaborations. This foundation will allow INTA to continue its future efforts for the advancement of trademarks in China by providing yearly local educational programs for Chinese brand owners and practitioners. As INTA s involvement in China grows, Chinese companies are becoming more involved in the daily operation and planning of the Association. The number of Chinese representatives that serve on INTA committees continues to grow along with the number of Chinese member companies. In 2002, INTA elected its first Chinese member, Mr. Chen Xuemin, to serve on the Board of Directors to provide guidance and assistance in maintaining INTA s long-term involvement and presence in China. In this context, it is appropriate to give the last word to Mr. Cao Zhongqiang, the Secretary General of the China Trademark Association. Recently he said: I am delighted to say that the China Trademark Association and INTA have now consistently over a period of almost five years met on several occasions during every year. This has had an enormous positive influence both ways

7 Vol. 93 TMR 123 to my mind. A very healthy exchange of the pressing needs of trademark owners in China and throughout the rest of the world takes place during each exchange. Allow me to wish the INTA the very best on their 125th birthday. In honour of INTA s 125th birthday, let us conclude with a celebratory toast often heard at INTA banquets hosted in China: 商标万岁! Long live trademarks!

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