Domain Name Disputes in the PRC - IKEA v. CINET

In China's first foreign-related case concerning the conflict between a trademark and a domain name, Holland's IKEA prevailed in canceling and preventing Beijing's CINET from using the ikea.com.cn domain name in derogation of the "IKEA" trademark registered in many countries. The China court found that "IKEA" was a well-known trademark, and should be protected under the Paris Convention. Of significance, the court also found that CINET had been using other "famous" marks, such as AMEX, Bacardi, Dunhill, Marriot, etc... The decision on this case is of great significance in China, and will be of profound historic significance for resolving conflicts between registered trademarks and domain names.

Trademarks

Priority- The PRC is a party to the Paris Convention, so it recognizes priority right by filing date for an application filed within six months of filing in any party country.

Foreign Applicant Requirements- Foreign applicants must provide a certificate of incorporation (if a foreign corporation), fifteen copies of the trademark design in black and white, Power of Attorney, and the applicant's full name in both English and Chinese.

The PRC requires a separate application for each class of goods or services (i.e., no multi-class applications).

Publication and Opposition- Any person may, within three months from the date of publication, file a petition to oppose a trademark. If no petition is filed, the registration shall be approved.

Duration and Renewal of Registration- The duration of a registered trademark is ten years from the date of approval of the registration. Renewal Applications must be filed within six months before expiration, although a six-month grace period may be allowed. Failure to file for renewal will result in cancellation.

Assignments and Licenses- All assignments and licenses must be recorded at the PRC Trademark Office. Assignments must be jointly recorded by both assignor and assignee.

Time Frame- Generally, the entire registration process for a straightforward trademark application (i.e., without complications or technical difficulties) should take approximately 16-18 months.

Copyrights

Computer software, sound, and video recordings are all copyrightable subject matter in the PRC.