�Rollershoe v. Chee Ting Shoe Trading Co. � a case study on

“Rollershoe v. Chee Ting Shoe Trading Co." – a case study on developing a brand protection strategy in China Webinar presented by the United States Department of Commerce and the American Bar Association Section of International Law Featuring: Ellen Szymanski, Department of Commerce Scott Bain, Software & Information Industry Association Elizabeth Chien-Hale, Institute for Intellectual Property in Asia Paul Jones, Jones & Co. Bruce A. McDonald, Schnader Harrison Segal & Lewis LLP November 13, 2007 1 China IPR Webinar Series Hypothetical 1: Rollershoe, Inc.     Manufactures and sells shoes with built-in, battery operated wheels; also apparel Manufacturing in U.S. since 1990 TMs, Copyrights, Patents registered in U.S. Registered Trademarks: 2 China IPR Webinar Series Hypothetical 1: Rollershoe, Inc.  Chee Ting Shoe Trading Company  Distributes foreign products in Chinese market Rollershoe and Chee Ting exchange marketing materials and catalogs Enter into distributorship agreement  July 10, 2007 trade show in Washington, DC   3 China IPR Webinar Series Hypothetical 1: Rollershoe, Inc.  Rollershoe registers trademark in China  Rollershoe chooses Chinese character name, and brand in Pinyin. Registers both in China. 4 China IPR Webinar Series Hypothetical 1: Rollershoe, Inc. 1) 2) 3) Identify Rollershoe’s IP Portfolio What has Rollershoe done to protect its IP in the U.S. and China? What else could it have done? 5 China IPR Webinar Series Hypothetical 2: Rollershoe, Inc.  After 1 year, 2 months Rollershoe sends Chee Ting letter remind of agreement terms  Rollershoes are everywhere in China, but company’s reported sales numbers are down. Shoe Emporium unauthorized U.S. retailer; purchased from Fay King Shoes, Ltd. in China  Accidents lead to investigation in U.S.  6 China IPR Webinar Series Hypothetical 2: Rollershoe, Inc.    Investigator tours Fay King factory in China, finds extensive counterfeit toys and apparel bearing Rollershoe marks, copies of Rollershoes’ brochures and catalogs with Chee Ting’s phone numbers. Rollershoe sends C&D to Chee Ting. Chee Ting responds that it owns the marks in China and has registered several (see Table C). China IPR Webinar Series 7 Hypothetical 2: Rollershoe, Inc. 1) What actions can Rollershoe take in China? 2) What actions can Rollershoe take in the U.S.? 3) What can the U.S. government do to assist Rollershoe? 8 China IPR Webinar Series Patent Protection in China Elizabeth Chien-Hale ech@institute-ip-asia.org 9 China IPR Webinar Series Patent Rights  Patent laws and rights are territorial   Even though one application can be filed in different countries Even though an applicant may, after meeting certain requirements, claim the filing date of its first filing in the home country  Your US Patents will not protect you in China 10 China IPR Webinar Series What Rollershoe Inc. Could Have Done:  Apply for Design Patents: ornamental features, not examined, 10-year term 11 China IPR Webinar Series What Rollershoe Inc. Could Have Done:  Apply for Utility Model Patents: shape and configuration, not examined, 10-year term 12 China IPR Webinar Series What Rollershoe Inc. Could Have Done:  Apply for Invention Patents: products and methods of manufacturing, examined, 20-year term 13 China IPR Webinar Series The Patent Application Procedure Applications submitted to the State Intellectual Property Office  Formality Examination for design and utility model applications  Substantive Examination for invention patent applications  In 2006, China received over 570,000 combined invention, design, utility model patent applications  14 China IPR Webinar Series Patent Protection in China   Not all inventions patentable in the United States are patentable in China: for example, software/business method patents are not easily granted After two sets of amendments in 1992 and 2000, a third set of amendments in currently in progress 15 China IPR Webinar Series Patent Protection for Rollershoe    Products have been out in the US since Jan. 1, 1990 Majority of its old technologies will not be able to meet the novelty standards: priority date must be claimed within the 12-month period Rollershoe should examine its patent portfolio and apply for patents in China for any new inventions China IPR Webinar Series 16 Enforcement of Patent Rights in China Good legal framework in place through legislative changes to bring its laws into compliance with international treaty obligations  Good registration/application procedures  Enforcement, or lack thereof, has been the focus of international attention  17 China IPR Webinar Series What Can Rollershoe Do in China? If Chee Ting applied for any patents for Rollershoe technologies in China, Rollershoe can invalidate these patents  Invalidation proceeding is before the State Intellectual Property Office  Decisions may be subject to judicial review  18 China IPR Webinar Series Enforcement Channels in China if Rollershoe Has Rights in China    Administrative Judicial Factors to consider in choosing the appropriate channel:     Are you seeking a quick, local solution? Do you care about damages? Administrative decisions may ultimately end up in courts Most would recommend the judicial route for patent rights China IPR Webinar Series 19 Customs Protection    New Regulations on Customs Protection of Intellectual Property (IP) Rights came into force in March 2004 Customs officials can detain and confiscate imported and exported infringing goods at the border Two types of protection:   Active protection: for pre-recorded IPR only; initiated by customs officials Passive protection: recording of IP rights with the customs authorities no longer required; initiated by IPR holders China IPR Webinar Series 20 Customs Protection (continued)  Even though all rights can be recorded, customs is not very equipped to deal with complex patent infringement issues. 21 China IPR Webinar Series What Can Rollershoe Do in the US? Section 337 investigation before the U.S. International Trade Commission: more and more Chinese companies are being sued and responding to the lawsuits  U.S. district courts  Customs actions at other countries where the infringing goods are sold: the EU countries for example  22 China IPR Webinar Series The End Thank you! Elizabeth Chien-Hale ech@institute-ip-asia.org TEL: 408-776-8719 FAX: 408-776-8718 23 China IPR Webinar Series Trademark Protection in China 商标保护在中花人民共和国 Paul Jones pjones@jonesco-law.ca November 13, 2007 24 China IPR Webinar Series Trademark Rights 商标权  Trademark laws and rights are territorial   Even though one application can be filed in different countries Even though an applicant may, after meeting certain requirements, claim the filing date of its first filing in the home country  Your US trademarks will not protect you in China 25 China IPR Webinar Series What Rollershoe Inc. Could Have Done:      Apply for Registration In China of: ROLLERSHOE All RS marks 我乐鞋 WO LE XIE & DESIGN 26 China IPR Webinar Series What Rollershoe Inc. Could Have Done:     Apply FOR Registration in China in multiple classes: Footwear Apparel toys 27 China IPR Webinar Series The Trademark Application Procedure Applications submitted to the State Intellectual Property Office  Either directly or through the Madrid Process  Examinations currently backlogged by about 3 years  Status can be monitored online for free in Chinese  28 China IPR Webinar Series Trademark Protection in China 商标保护在中国     商标法 or Trademark Law adopted in 1982 After two sets of amendments in 1993 and 2001, a third set of amendments in currently in progress Regulation for the Implementation of the Trademark Law adopted in 2002 Supreme People’s Court Interpretation on Several Issues Concerning the Application of the Law to the Trail of Civil Dispute Cases Involving Trademarks – 2002 China IPR Webinar Series 29 Enforcement of Trademark Rights in China 商标权实施 Good legal framework in place through legislative changes to bring its laws into compliance with international treaty obligations  Good registration/application procedures  Chinese courts do enforce trademarks, and especially foreign owned trademarks  30 China IPR Webinar Series Enforcement of Trademark Rights in China商标权实施  Many IP decisions now available at: http://ipr.chinacourt.org/ Court web sites available at: http://www.chinacourt.org/fyzx/  31 China IPR Webinar Series What Can Rollershoe Do About Trademarks in China?  Under the Trademark Law:  Articles 15 & 41 – where an agent of a representative registers trademarks of the person for whom it acts – request TRAB to cancel With respect to the RS marks, Articles 31 & 41 – registration by other cannot prejudice to prior right of Rollershoe – have 5 years to request review and cancellation by TRAB China IPR Webinar Series  32 What Can Rollershoe Do About Trademarks in China?  With respect to RS marks, Articles 52 & 53 – use of similar marks Articles 13, 14 & 41 – well known mark Article 41 – Where the registration of a trademark was acquired by fraud or any other unfair means – TRAB shall cancel   33 China IPR Webinar Series What Can Rollershoe Do About Trademarks in China?  Under the 反不正当经济法 – AntiUnfair Competition Law  Article 5 – counterfeiting or copying packaging  Decisions may be subject to judicial review 34 China IPR Webinar Series Enforcement Channels in China    Administrative Judicial Factors to consider in choosing the appropriate channel:     Are you seeking a quick, local solution? Do you care about damages? Administrative decisions may ultimately end up in courts Trend is to recommend the judicial route China IPR Webinar Series 35 The End 谢谢 Thank you! Paul Jones pjones@jonesco-law.ca TEL: 416-703-5716 FAX: 416-703-6180 36 China IPR Webinar Series China IPR Webinar Series November 13, 2007 Bruce A. McDonald SCHNADER HARRISON SEGAL & LEWIS LLP 2001 Pennsylvania Ave., N.W., Suite 300 Washington, D.C. 20006 (202) 419-4235 37 China IPR Webinar Series Questions  What else might Rollershoe have done to protect its IP in the U.S? What remedies does Rollershoe have in the U.S.? Is Rollershoe liable for Sam Lo’s injuries? China IPR Webinar Series   38 Recordation of Trademarks and Copyrights With U.S. Customs  See McDonald and Yoo, “Recording Trademarks, Trade Names and Copyrights with U.S. Customs: Requirements, Procedure and Fees,” in Masterson, ed., International Practitioner's Deskbook Series: International Trademarks and Copyrights - Enforcement and Management (American Bar Association 2004) 39 China IPR Webinar Series Review of Customs Determination  Lois Jeans & Jackets, U.S.A., Inc., v. United States, 5 C.I.T. 238, 566 F. Supp. 1523 (1983) Ross Cosmetics Distribution Centers, Inc. v. United States, 18 C.I.T. 979, 34 USPQ2d 1758 (1994) Sakar International, Inc. v. United States, 466 F. Supp. 2d 1333, 2006 Ct. Intl. Trade LEXIS 182 (2006) United States v. Nippon Miniature Bearing Corp. and Minebea Co., Ltd., 25 C.I.T. 635, 155 F. Supp. 2d 707 (2001) Vivitar Corp., Plaintiff v. United States, 8 C.I.T. 109, 593 F. Supp. 420 (1984)     40 China IPR Webinar Series Remedies in U.S.  Action for Exclusion Order at U.S. International Trade Commission Action for Injunctive Relief and Damages in United States District Court  41 China IPR Webinar Series U.S. Court Action    Personal Jurisdiction Trademark License / Joint Venture Irreparable Harm  Kitty Walk Systems, Inc. v. Midnight Pass Inc., 431 F. Supp. 2d 306 (E.D.N.Y. 2006) Christopher Norman Chocolates, Ltd. v. Schokinag Chocolates North America, Inc., 270 F. Supp. 2d 432 (S.D.N.Y. 2003) China IPR Webinar Series  42 ITC Complaint     Faster / less expensive Useful discovery for later court action Decreases cost of later court action Equitable relief against foreign parties not subject to personal jurisdiction  Easier burden of proof China IPR Webinar Series 43 ITC Complaint  Section 337 of the Tariff Act of 1930, 19 U.S.C. § 1337 In case of patent or trademark infringement, Section 337 prohibits:    Importation Sale for importation  Sale after importation China IPR Webinar Series 44 U.S. Industry Requirement  Relevant industry exists or is being established. • investment in plant and equipment; • • employment of labor or capital; engineering, research and development; or licensing. China IPR Webinar Series • 45 ITC Complaint  Examined by Office of Unfair Import Investigations. Recommendation to Commission w/in 30 days. Commission usually determines whether to investigate w/in 30 days of filing complaint. Notice of decision published in Fed. Reg. If investigation is commenced, complaint is served on embassy of foreign respondent. Decisions not to investigate are rare. China IPR Webinar Series      46 ITC Procedure      Hearing before ALJ Commission Rules, 19 CFR Part 210 APA, 5 U.S.C. § 551 et seq. ITC offices, Washington, D.C. ALJ initial determination certified to Commission. Commission may adopt, modify or reverse. China IPR Webinar Series  47 Counterclaims    ITC does not hear counterclaims But invalidity may be raised as defense Counterclaim must be removed to federal court Complainant may request stay of federal court action Federal court counterclaim does not delay ITC investigation China IPR Webinar Series   48 Action by Commission  Investigation concluded “at the earliest practicable time” = 15 months from publication of notice of investigation in Fed. Reg. Decision not to review AJL initial determination is final agency decision  49 China IPR Webinar Series ITC Orders  Exclusion Order   All infringing products (general exclusion); or Infringing product of named manufactuurer (limited exclusion)  Cease and Desist Order  Resale in U.S.  Preliminary Injunction / TRO China IPR Webinar Series 50 Product Liability  Rockwell, Trademark Licensor’s Liability for Injury or Death Allegedly Due to Defect in Licensed Product, 90 A.L.R. 4th 981  Note, Tort Liability of Trademark Licensors, 55 Iowa L.Rev. 693 (1970) Franklyn, The Apparent Manufacturer Doctrine, Trademark Licensors and the Third Restatement of Torts, 49 Case W. Res. 671 (1999) Franklyn, Toward A Coherent Theory Of Strict Tort Liability For Trademark Licensors, 72 S. Cal. L. Rev. 1 (1998)    Germain, Tort Liability of Trademark Licensors in an Era of "Accountability": A Tale of Three Cases, 69 Trademark Rep. 128, 136 (1979) China IPR Webinar Series 51 Restatement  § 400 of the Restatement (Second) of Torts: “One who puts out as his own product a chattel manufactured by another is subject to the same liability as though he were its manufacturer.” Compare Restatement (Third) of Torts: Products Liability § 14 cmt. d (1998) (apparent manufacturer doctrine "does not, by its terms, apply to the owner of a trademark who licenses a manufacturer to place the licensor's trademark . . . on the manufacturer's product and distribute it as though manufactured by the licensor")  52 China IPR Webinar Series Issues   Strict Liabilty Control    53 Negligence Defective Design Need for enforcement action in U.S. China IPR Webinar Series Factors  Risk created by approving unsafe product Ability and opportunity to eliminate unsafe character of product Consumer’s lack of knowledge of danger    Consumer’s reliance on trademark / trade name China IPR Webinar Series 54 THE END . 55