Arduboy Chinese Trademark?

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#1

So I got an email, pardon my language:

And while the company that is contacting me is, probably questionable at very best, I looked into the claims of the trademark:

I AM AWARE THIS MIGHT BE A SCAM!

Several twitter users linked me to this article:

But I don’t think that’s what’s happening… exactly anyways. Number one, that’s 9 years old so I’m sure the scam has evolved from then. I think this is more akin to what happens in the US and other countries too, where there is a legit filing, and this is a legit company trying to cash in fat over representing you.

A fun part about running a business is you get to deal with all of the ramifications of certain elements of your operation being completely public, and you see all sorts of weird things come out of the woodwork. Especially for myself, with Arduboy being such a weird viral thing in the beginning it found it’s way all over.

It’s medium difficult to try and figure out what is actually a legit website for the chinese trademark office, which to even call “legit”, I’m sorry, is a bit of a stretch anyways.

https://www.ipaustralia.gov.au/sites/default/files/guide_to_searching_chinese_trade_marks.pdf

This document and some other resources seem to point me at resources that seem to all show that the trademark was filed for

This website allows you to search, but you need to sign up to see the full details:

But it does return the international classification code which you can enter on this other website which would you would otherwise have to guess at:

This link seems to be the “official” source.

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They all appear to be applied for in July 2nd 2020 and are currently “Awaiting examination”

All are “for reference only, no legal effect”

So at this time, it seems as if the first email is true the situation:

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May be correct.

Whether or not I want to use their services, probably not, I can try to get my own representation in China. I had a chance to get a Trademark in China before, but I decided that I could not enforce it if a company tried anything. But the situation may come if they take the trademark and try to stop Seeed from producing, that is the bigger issue.

So at this time, all I can really do, is notify Seeed studio and see what they think should be done. I’ve notified them and see what they think. After that I will probably get a second opinion from some legal advice within China directly.

In the meantime, we got this f***ing thing to enjoy:

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#2

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Lol according to google maps says it is Suzhou Siemens Electrical Appliances Co.,Ltd.

The information could be out of date, old or new and also it could be both are there, and just share offices.

#3

Shoot an email to banggood that some company is ripping off their logo rofl

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#4

Isn’t banggood ripping off amazon?

#5

That’s a trademark for a totally different device … ar - dub - boy.

Its a music machine.

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#6

It’s fine I’m sure several of you might be able to guess what I would do if they tried to make me stop calling it Arduboy. :woman:

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#7

lol! but it will never go thru, I mean, it is 1 google away for the people actually inspecting the trademark request

#8

It would be funny if the company registering the trademark and the ‘intellectual property firm’ happened to both be owned by the same company…

I wonder if Hong Kong law is any better than Chinese law? :P

Yes. Amazon’s logo was created in 2000, Banggood has only been around since 2006.

From our perspective, yes, but one Google might look very different behind the great firewall of China. :P

#9

Unfortunately way Chinese IP law works, is that it’s separate from all other IP… meaning just because you have a US trademark it does not protect it at all in China.

In fact, it’s kind of the opposite view point, they WANT to give the trademark to the domestic company if the western one is too lazy to bother to do it.

#10

Their mark bears no resemblance to yours, unless they’re registering the word mark too! Also, if they did manage to register Arduboy in the relevant class, would it make any difference if your main use of the mark is outside of Chinese territory? You clearly have unregistered rights and could submit objections to new registrations but as with all IP, enforcement and costs are down to the rights holder. The company that contacted you does sound like an ambulance chaser for sure.

#11

Apparently:

Only registered trade and service marks are protected in the PRC: there is no common law protection for unregistered trademarks

Which throws a spanner in the works.

This means that even if there’s plenty of evidence of the Arduboy trademark being actively used and recognised online, that evidence is potentially irrelevant.

There is a special dispensation for “well-known” trademarks,
but I’m doubtful that the Arduboy trademark would qualify.

the courts and administrative bodies will take into account the level of knowledge of the trademark by relevant consumers, the length of use of the trademark, the amount of publicity given to the mark in China, and the history of the mark

I’m expecting ‘relevant consumers’ would mean a group of average Joes pulled off the street.
(Or should that be average Jins? :P)

It’s called “territoriality” and it’s actually more common than just China.

Once trademark rights are established in a particular jurisdiction, these rights are generally only enforceable in that jurisdiction, a quality which is sometimes known as “territoriality”. However, there is a range of international trademark laws and systems which facilitate the protection of trademarks in more than one jurisdiction.

The extent to which the rights of a trademark registered in one jurisdiction are recognised in another varies significantly.

I haven’t found any evidence either way, but it’s possible that the Arduboy trademark being registered in the US wouldn’t actually protect it in any European country either.

I think one of the reasons people assume they’re protected is because there are international laws governing copyright that affect nearly all countries (e.g. the Berne Convention), but copyright and trademarks are actually two different things governed by separate laws.

Copyright governs things like art and literature (and source code), but not commercial products or services.

Disclaimer: I am not a lawyer. This is not legal advice.

#12

@Pharap you are right, my trademark is not registered in other countries.

However, all of them that are major markets have legal systems that would support any major issues this would cause “for the most part”. And in europe, having a previously valid US trademark does give you some help, as best as I understand it, while they don’t follow US trademarks they do consider them being a valid proof prior art or whatever… (from what I remember when I look into it).

But more importantly, my factory is not in any of these countries.

It’s not something I was worried about in the beginning, and probably should have just done as a preventative measure. I just didn’t really plan on being big enough for long enough that it was worthwhile. Frankly, the reason I got it in the USA is mostly for internet purposes, I didn’t actually expect to use it against other products.

#13

Yep.
Sometimes you know it’s a chinese site by simply looking at the Url. The way they tend to form is not from English words but rather from PinYin (which I think is dumb but acceptable)

But your first site seems okay-ish too. That chatbot is also very chinese

I think the main argument is whether they are trying to stop Seeed from producing Arduboys. I don’t think so, but that doesn’t mean you shouldn’t go ask for more advise.

That logo is just utterly dumb. They don’t even understand the “ardu” part of it.

A quick search yielded their “official site”: www.cn-steam.cn (dead link)
And seems like it had actually moved (physically) from one place to another.

#14

It might make it easier to register a trademark such that it would be recognised overseas (e.g. as an EUTM or via the Madrid Protocol), but as far as I can see it gives absolutely no guarantee that (for example) an EU court would recognise the US trademark as being valid, and most of the sources I’ve been able to find (e.g. 1, 2) seem to imply that a US trademark offers no protection or rights in other jurisdictions.

Apparently the EU doesn’t recognise common law rights either.
(I.e. using an unregistered trademark isn’t enough to grant you rights.)
Some of the constituent countries might (e.g. formerly the UK), but the EU itself doesn’t.

Prior art applies to patents, not trademarks.

That is indeed true, I was merely pointing out that on paper at least China’s trademark laws aren’t unusual, and that sometimes what you expect to be how law works isn’t actually how it works.

That all said, I may have some good news for you if the article I just found is correct…

Apparently in November 2019, China made an amendment to their trademark law aimed at tackling bad faith trademark applications.

https://www.china-briefing.com/news/china-2019-trademark-law-amendment-whats-new/

The most notable improvement to the Trademark Law is a new provision added to Article 4, which allows the China Trademark Office (CTO) to reject malicious trademark applications at the application or initial examination stage. To reinforce this, the law has made changes to Articles 33 and 44, which allow malicious trademark registrations to be opposed or invalidated as well.

So if you could prove that the trademark application is ‘malicious’ then you would at least have a leg to stand on.

If the trademark is still in the three-month announcment period then you ought to be able to ‘lodge an objection with the CTO’ as per article 33.

It’s also worth noting that it’s actually in the trademark company’s best interests to prevent the registration because they could face a hefty fine if they’re found to be violating article 4 by allowing a malicious trademark through the system.

If the time in which articles 4 and 33 would have applied might have passed, article 44 remains as an option.

Unfortunately proving that it was done ‘maliciously’ is easier said than done.

Apparently yes.

The idea that they could actually stop Seeed Studio from producing Arduboys has a fair bit of merit.
Worse yet, any Arduboys still in China could be stuck in China.

If you are having your products made in China and someone registers your brand name or logo as their trademark, they (not you) are the rightful owner of that trademark in Chin and this means they can cease your products and prevent them from leaving China for violating their trademark rights. This actually happens quite often and the perpetrator of this “theft” is usually tied to your own manufacturer.

Given the rest of the aforementioned blog’s advice, I think gathering information about the registrant is probably the best course of action (other than finding a decent lawyer of course). If it can be proven that they’re somehow linked to Seeed Studio or that they’re a serial squatter then that might be enough to take advantage of articles 33 or 44.

#15

It’s up to Seeed. I don’t really have the position to enforce it or do anything about it there. US market is a majority of my sales, EU MIGHT make sense, but I don’t expect any bad actors from there.

I thought about it for a very long time in the beginning about if I wanted to do it and at the end of the day I decided all it really would do is prevent me from selling directly to the chinese market and couldnt stop them from making a clone. The second I couldn’t really do anyways.

If they come out with a straight Arduboy copy then that will be very interesting to see. I somewhat suspect it’s just an IP troll.

I sorta almost hope they make some hardware that is better, that is cheaper and I can just visit them one day to just get a small % instead of being nasty.

#16

oh, now I remember that I own the chilean and norwegian Arduboys :crazy_face:

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#17

Great the Norvegian Arduboys market is really so amazing. You’re a lucky man mate :wink:

#18

Status update: It will cost a little more than $2,000 to challenge the 4 classifications that the other company is trying to register the Arduboy trademark under. And there is no guarantee it will work.

That also doesn’t give me my own trademark, I’d still have to spend another $2,000 to actually get the trademarks myself.

My current plan is to challenge them as it seems like the right thing to do. If it fails I’m probably going to change the name of the product in China or just not sell it there. I don’t think it effects my ability to export, though I’m waiting on clarification on that.

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#19

So I’ve been told to expect a 50 to 60% chance of disputing the trademark. And it could effect exporting.

So there is a 40 to 50% chance that Arduboy is going to have a name change.

Hopefully if I do it will catch some news and make it a net benefit.

1 Like
#20

@bateske You could use dotMG :wink:

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