Ms. Yan Zhang, the partner of Beijing East IP Law Firm, participated as a presenter at Strafford live video webinar “Trademark Doctrine of Foreign Equivalents” on September 15, 2021. Brett Heavner, the partner of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP and Yinfei Wu, the attorney of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP also joined in the panel. The panel examined the doctrine of foreign equivalents in the context of trademark prosecution, clearances and trademark infringement in different languages, also reviewed recent cases and discussed the lessons from those decisions.

Ms. Zhang started with the explanation on Chinese equivalents of foreign language trademarks, and then discussed the importance and urgency of trademark protection of Chinese equivalents. Based on examination practices of the Chinese Trademark Office and courts applying the doctrine of foreign equivalents, Ms. Zhang further summarized the factors and criteria of judging the similarity between foreign language trademarks and Chinese equivalents in prosecution and litigation.

As for the protection of Chinese equivalents of foreign language trademarks in China, it is quite common that oversea brand owners do not have “official” translations for foreign language trademarks, nor do they use and promote the trademarks in Chinese. Chinese distributors, public and media often use Chinese versions to refer to brand owners. Ms. Zhang shared her experiences from multiple perspectives, such as passive use, distributors’ squatting, brand owners denying corresponding Chinese equivalents, sufficiency of evidence and time of evidence formed. By combining with the specific cases represented, Ms. Zhang elaborated some issues and lessons regarding the corresponding relationship between foreign language trademarks and Chinese equivalents, and provided practical advices for oversea brand owners doing business in China.

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