Dickenson Peatman & Fogarty to present “Exporting Wine to China” to Sonoma County Vintners
Dickenson Peatman & Fogarty attorneys will be presenting “Exporting Wine to China” to the Sonoma County Vintners on Wednesday, April 8th from 9:30am – 11:00am. The seminar will be held at the SCV offices: 3637 Westwind Blvd., Santa Rosa. “This is a timely seminar as our members will be heading to China on an export mission in May” said Nicole Daly, International Program Manager. The seminar will cover a wine market overview for exporting wine to China and Hong Kong.
Katja Loeffelholz, a registered attorney with the United States Patent and Trademark Office and Of Counsel with Dickenson, Peatman & Fogarty, will discuss how to devise marketing plans that protect your brand and present strategies for developing and maintaining a strong brand given the current challenges to intellectual property rights in China.
Elizabeth Palmer Senior Counsel at Dickenson Peatman & Fogarty will present on international tax considerations when exporting to China and provide an overview of PRC Taxes.
John Trinidad and Bahaneh Hobel Counsel at Dickenson Peatman & Fogarty will discuss 5 points to include in any export agreement and important tips for structuring your producer-exporter relationship.
This seminar is exclusively for Sonoma County Vintners members. If you are interested in joining the Sonoma County Vintners or would like to attend the seminar please contact Kelley Perez at [email protected]. Katja Loeffelholz can be reached at [email protected], Elizabeth Palmer at [email protected], John Trinidad at [email protected] and Bahaneh Hobel at [email protected]
Exporting Wine to China Seminar – Part II
New Chinese Trademark Law – Effective May 1, 2014
For decades, China has been criticized for shielding “trademark hijackers” – individuals or entities who have registered well known U.S. marks in China despite having no affiliation with that brand. If a winery failed to apply for their trademark in China often it was not too long thereafter that the brand would be registered in China without knowledge or permission from the brand owner. While this practice continues to this day, the new Chinese Trademark Law (adopted on August 30, 2013 and entering into effect on May 1, 2014) will emphasize the principal of good faith to aid in the crack down against trademark hijacking and will impact trademark matters in China occurring from May 1, 2014 forward.
The new law states that trademarks shall be registered and used in accordance with the principal of good faith. An injured party can use the good faith principle to challenge a trademark hijacker’s Chinese trademark registration during an opposition or invalidation proceeding even if the injured party does not hold an identical or similar trademark registered in China covering identical or related goods or services. The new law also increases the penalty cap for trademark infringements to RMB 3 million (around $491,892 U.S. Dollars). Despite these amendments, it may likely remain difficult and frequently impracticable for western entities to quash bad-faith filings of their trademarks if their brands are not registered in China.
The new law provides for specific measures to discourage bad-faith filings under certain circumstances. On the one hand, distributors and manufacturers are advised to refrain from applying for a trademark identical or similar to a trademark which has been used earlier (but not yet registered) by their partners, with respect to identical goods or services. “Partnership” is interpreted in a broad way to include contractual relationships, business relationships and other relationships.
As an added boon, the amendments prohibit a trademark agent in China to handle a trademark application if it knows or should know that the client’s application is an attempt to usurp or hijack another person’s trademark or is made with intent to preemptively register, in an unfair manner, a trademark that is already in use (but not registered) by another person who enjoys a certain reputation. Moreover, trademark agencies are prohibited from registering trademarks in their own names for other services outside IP services.
Even with the new law, the best defense is a good offense–register your brands in China. Like the United States, China is a contracting member to the Madrid Protocol. Under the Madrid Protocol, U.S. trademark counsel can apply for a trademark in China based on a client’s U.S. trademark application or registration. Utilizing the Madrid Protocol may remain the most effective strategy for protecting your brands in China.
Considering that the world has more than 7 billion inhabitants of which the majority or 1,317,471,458 billion of them reside in China, (in comparison, the U.S. population is estimated to contain 317,471,460 inhabitants), with such a large potential market, it makes sense to register your brand in China. Doing so is cost effective especially in light of the frequent hijacking of wine brands. If you are planning to sell in China in the near future or would be upset to learn that your brand has already been registered in China, albeit to someone else, the most cost effective strategy to prevent such abuse is to register your brand in China. The initial outlay in registering a brand in China pales in comparison the costs associated with losing your brand to a hijacker or marshaling resources to get the brand back.
Part I of the “Exporting Wine to China Seminar” was published on LexVini on October 17, 2013.
Trademark Protection for Wine in China
In Fall 2013, DP&F’s Katja Loeffelholz was a guest lecturer at Cal Poly San Luis Obispo’s new Wine and Viticulture program on “Protecting Your Intellectual Property Assets in the Wine Industry” which reviewed the various aspects of wine labels and packaging that can be trademarked, copyrighted and patented. Ms. Loeffelholz also presented detailed information on protecting trademarks abroad, focusing on protecting wine brands in China. Her presentation can be found through the links below.
Exporting Wine to China Seminar Report – Part I
Dickenson, Peatman & Fogarty attorney Katja Loeffelholz, a registered attorney with the United States Patent and Trademark Office, recently presented at The Seminar Group’s “Exporting Wine to China” program on “Protecting Intellectual Property.”
China represents the single largest growth opportunity for wine producing countries around the world. China is a brand driven market. So what are the challenges in protecting intellectual property in China?
One of the principal difficulties of protecting intellectual property in China is the failure of U.S. wine brand owners to register their trademarks in China. Sometimes the failure to register stems from the mistaken belief that a U.S. registration protects them abroad, or the belief that registration in China is expensive and time consuming. For others still, business or wine exports may be expanding so rapidly that they unintentionally expose to themselves to risk by postponing registration.
China’s Standing Committee of the National People’s Congress has passed new trademark law provisions that should improve a trademark owner’s ability to enforce their rights and deter infringers. The new law provides for an increase in statutory damages. Where the infringer is believed to have acted in bad faith, the courts may also award treble damages. These revisions to the law will serve as a deterrent to infringers while signaling to the rest of the world that China will not tolerate a violation of trademark rights.
However, a U.S. wine brand owner will be unable to take full advantage of the provisions of the new China trademark law unless and until it registers its mark in China. There are essentially two ways for a U.S. company to obtain trademark registration in China. The first is to have its trademark counsel file the trademark application directly in China working with foreign counsel. The second is to use its U.S. trademark registration as a basis for submitting an International Registration with the United States Patent and Trademark Office. It should be noted that a trademark registration in the People’s Republic of China will not provide trademark protection in Hong Kong or Macau. Separate applications will need to be made.
For more information on how you can secure trademark rights in the U.S. and abroad, please contact Katja Loeffelholz at [email protected]. To obtain a copy of Ms. Loeffelholz’s presentation “Protecting Intellectual Property” presented at the “Exporting Wine to China” conference please visit www.TheSeminarGroup.net
Wine Institute Presentation on Protecting Your Brand in China
For more information on protecting your wine brand in China contact Scott Gerien at [email protected]
Is Your Brand Safe in Asia?
China is the new darling of luxury good exports, including wine. However, many wineries fail to fully consider the need to protect their trademark in China prior to doing business there. Not only is counterfeiting a problem in China, but so is trademark squatting where Chinese nationals pre-emptively register foreign company trademarks. Scott Gerien, the head of DP&F’s intellectual property practice, discusses these issues in his column in the January 2012 issue of NorthBay biz which may be accessed HERE.
For more information or assistance on international trademark protection contact Scott Gerien at [email protected]