Implementation of trademark strategies in China

In China, trademark infringement methods have undergone many changes in recent years, and the nature of infringement has become increasingly sophisticated and complicated. It would be difficult to cope with the myriad of complicated infringement cases by only applying single anti-counterfeiting raid actions or litigation. Therefore, it is very important to develop appropriate strategies according to the specific circumstances before taking legal action. However, even with a trademark strategy, implementation of the same is still a matter of great concern. In this column, the author discusses the importance of strategies when dealing with trademark infringement.

CHOICE OF ACTION

Trademark strategies for coping with complicated infringement cases generally include a number of actions, such as sending a cease and desist letter, filing an online complaint, requesting an administrative raid action, filing for litigation, etc. Yet a trademark strategy shouldn’t be a mere enumeration of actions, but it needs to analyze the strengths and weaknesses of each action in terms of each specific case. This allows one to choose the appropriate primary action for the case and then allocate resources to such primary action. One could say that choosing the primary action determines the direction of the case’s development. If the wrong primary action is chosen, it is likely to cause irreparable loss to the overall case in the later stages.

For example, for an infringer who has registered a trademark maliciously, if it is necessary to revoke or file for a cancellation action against the registered trademark at the outset of the case, and so the primary action is to invalidate the trademark of the aforementioned infringer. After the primary action is successfully completed, follow-up actions will then go smoothly. If a lawsuit is filed rashly, when the trademark of the infringing party is valid, and then lost due to the fact that the trademark of the infringing party was still valid, then it may be very difficult to reverse this unfavorable situation in the later stages.

Therefore, when implementing a trademark strategy, one must choose the appropriate primary action for the specific case, and then arrange follow-up actions based on the primary action so as to achieve favourable results.

Frank Liu is a partner at Jincheng Tongda & Neal