同济大学：《中国知识产权保护》课程电子教案（课件讲稿）08 商标保护 Trademark Protection in China（2/2）

Trademark Centralized and voluntary registration system ◆“First-to-file"system Prior use Priority right:file in China within 6 months of registration of the same mark at home Nice Classification of products and services Requirements for registration: 1.Visual Sign/mark which can be "seen"+sound mark;2.legality;3.Non- functionality;4.Distinctiveness;5.No conflict with prior right Special protection for well-known trademarks:recognized by administrative or judicial authority Trademark in Chinese language 2012.9.11 Tongji-Zhang Taolue 2

Trademark ◆ Centralized and voluntary registration system ◆ “First-to-file” system Prior use ◆ Priority right: file in China within 6 months of registration of the same mark at home ◆ Nice Classification of products and services ◆ Requirements for registration: 1. Visual Sign/mark which can be “seen” + sound mark; 2. legality; 3. Non￾functionality; 4. Distinctiveness; 5. No conflict with prior right ◆ Special protection for well-known trademarks: recognized by administrative or judicial authority ◆ Trademark in Chinese language 2012.9.11 Tongji - Zhang Taolue 2

Trademark in Chinese language Trademarks in Chinese language, Yahoo vs.Suzhou Yilong either translation Yahoo”:1996 or transliteration(sound alike) “雅虎”：1997 Decision:supporting the respondent ◆Nike-original Mark ◆Core Reasoning: 耐克-Chinese name 1.registered on different products Naike-Chinese romanization and services. 2."Yahoo"not well known then ◆Castel-卡斯特 3.“雅虎”(elegant Tiger）.”i5a Nick name of a gifted Scholar guy in Ming Dynasty in Suzhou,having different meaning to "Yahoo". 2012.9.11 Tongji-Zhang Taolue

Trademark in Chinese language ◆ Trademarks in Chinese language, either translation or transliteration(sound alike) ◆ Nike - original Mark 耐克 - Chinese name Naike - Chinese romanization ◆ Castel – 卡斯特 ◆ Yahoo vs. Suzhou Yilong “Yahoo”：1996 “雅虎”：1997 ◆ Decision：supporting the respondent ◆ Core Reasoning: 1. registered on different products and services. 2. “Yahoo” not well known then 3. “雅虎”（elegant Tiger）” is a Nick name of a gifted Scholar guy in Ming Dynasty in Suzhou，having different meaning to “Yahoo”. 2012.9.11 Tongji - Zhang Taolue 3

Pfizer's Disputes Over its Viagra Trademark 面技钠伪斯布巩 请认准真品 1996 "Viagra"trademark registration filing in U.S.and in China 1997 Pfizer attempted to register-Wei Er Gang 万艾可 而例，means"Mighty and Firm.”Rejected by CTMO 1998 Launched in U.S.for being "too sexually suggestive (伟哥) ·the best-known name for“Viagra"in China,Neige(伟 or-Great Older Brother Owner:A Chinese company,Viamen Pharmaceutical Co, owns Weige Pfizer owns Wai Aike(万艾可)，a transliteration of Viagra that has no meaning in Chinese Rule:(1)The brand owner should obtain a Chinese trademark registration for the transliteration ofits English-language trademark from the China Trademark Office(CTMO),before or at the same time that the brand owner introduces its English-language trademark;(2)take care of its cultural meaning

Pfizer’s Disputes Over its Viagra Trademark • 1996 “Viagra” trademark registration filing in U.S. and in China • 1997 Pfizer attempted to register ―Wei Er Gang (威 而 钢) , means “Mighty and Firm.” Rejected by CTMO • 1998 Launched in U.S. for being “too sexually suggestive ” • the best-known name for “Viagra” in China, Weige (伟 哥) or ―Great Older Brother • Owner: A Chinese company, Viamen Pharmaceutical Co, owns Weige • Pfizer owns Wai Aike (万艾可), a transliteration of Viagra that has no meaning in Chinese • Rule: (1)The brand owner should obtain a Chinese trademark registration for the transliteration of its English-language trademark from the China Trademark Office (CTMO), before or at the same time that the brand owner introduces its English-language trademark ; (2) take care of its cultural meaning