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Co-author: Jason Wang, Partner at Beijing East IP Law Firm
Co-author: Yan Zhang, Partner at Beijing East IP Law Firm
*This article is published on The Trademark Lawyer Magazine (Issue 3, 2015). The Trademark Lawyer Magazine is sponsored by the CTC Legal Media.
Some Chinese equivalents for English trademarks are protected in China, while others are not. Jason Wang and Yan Zhang from Beijing East IP Law Firm summarize a few key cases and explain the reasons behind the rulings.
When foreign brands enter into the China market they are generally translated into Chinese, either for use by the brand owners, or by Chinese media and Chinese public. According to authorities including the China Supreme Court, some Chinese equivalents for its English trademarks are protected, such as GOOGLE, CANON, LAND ROVER, HARLEY (of Harley-Davidson), MICHELIN, PORTS INTERNATIONAL, GIOGRIO ARMANI, SOTHEBY’S, RITZ CARLTON, and FREDDIE MAC. Others are not protected, such as VIAGRA, SONY ERICSSON, DELL, MICHAEL JORDAN, and RANDOM HOUSE. And still others are protected in one case while not protected in another, such as LAFITE.
Corresponding association affirmed
In the LAND ROVER invalidation case, the courts held that LU HU in Chinese has been widely used by media reports to refer to the LAND ROVER vehicle in China. In the CANON opposition case, the courts held that CANON, together with JIA NENG in Chinese, enjoys high fame after being promoted and used for quite a long time, and Chinese consumers are likely to associate CANON with JIA NENG in Chinese. In the FREDDIE MAC opposition case, the courts held that FANG DI MEI in Chinese has established a corresponding association with FREDDIE MAC in the field of mortgage loans.
In the MICHELIN opposition case, the courts held that in addition to the cited mark MICHELIN (Class 25), the cited mark MI QI LIN in Chinese (Class 12) has been extensively used and enjoys a high reputation in tyre industry (Class 12) in China, and the consumers are likely to associate MICHELIN with MI QI LIN in Chinese. MI QI LIN in Chinese is a common transliteration of MICHELIN. Thus, the opposed mark MI QI LIN in Chinese and MI QI LIN and Design (Class 25) shall be deemed similar to the common transliteration of MICHELIN (Class 25). In the PORTS INTERNATIONAL opposition case, the courts held that the registrant of the cited mark PORTS INTERNATIONAL covering socks (Subclass 2509) owns the other cited mark BAO ZI in Chinese covering clothing (Subclass 2501) as well. The cited mark PORTS INTERNATIONAL can be commonly pronounced as BAO ZI in Chinese by the Chinese public, and shall be deemed as the common transliteration of PORTS INTERNATIONAL. Thus, the opposed mark BAO ZI in Chinese and Design covering socks (Subclass 2509) shall be deemed similar to PORTS INTERNATIONAL (Subclass 2509). In the HARLEY trademark infringement case, the court held HA LEI in Chinese is recognized by the public to refer to the trademark owner of HARLEY-DAVIDSON and its products of motorcycles (Class 12), and shall be deemed a corresponding Chinese transliteration of the HARLEY mark on motorcycles maintenance and repair services (Class 37).
In the SOTHEBY’S trademark infringement case, SOTHEBY’S, as an unregistered mark, is recognized as well-known on auction services, and SU FU BI in Chinese is deemed as the Chinese transliteration thereof. In the RITZ CARLTON invalidation case, RITZ CARLTON is recognized as well-known on hotel services, and LI ZI KA ER DUN in Chinese is a Chinese translation of RITZ CARLTON widely adopted by Chinese media. Thus, the disputed mark LI ZI KA ER DUN in Chinese on real estate services is the translation of RITZ CARLTON.
In the GIOGRIO ARMANI invalidation case, the courts held that the fashion designer Giorgio Armani enjoys a high reputation in the clothing industry, and its Chinese translation QIAO ZHI A MA NI in Chinese enjoys high fame as well in China. Thus, the disputed mark QIAO ZHI A MA NI in Chinese covering cosmetics shall not obtain registration. In the GOOGLE trademark infringement case, Google launched its Chinese name GU GE in Chinese on April 12, 2006, with press release available at 15:05 that day, while the defendant filed the application for trade name of the same Chinese characters at 15:50 on the same day. The courts held that GU GE in Chinese shall be deemed as the corresponding Chinese translation of GOOGLE as the trade name, and the defendant’s trade name GU GE in Chinese shall be changed.
Corresponding association denied
Scenario 1: The owner of the English mark once expressly denied the corresponding Chinese equivalent as its mark.
The VIAGRA case and SONY ERICSSON case are typical examples. The Chinese equivalents of the English marks (VIAGRA and SONY ERICSSON) were not protected, as Pfizer and Sony Ericsson once expressly denied the corresponding Chinese equivalents as their marks, namely, WEI GE in Chinese (meaning Great Brother) and SUO AI in Chinese (meaning Seeking Love).
Scenario 2: Evidence fails to establish the corresponding association.
In the RANDOM HOUSE opposition case, the court held that most evidence submitted is later than the application date of the opposed mark LAN DENG in Chinese and evidence fails to prove the establishment of the sole and corresponding association between RANDOM HOUSE and LAN DENG in Chinese. In the DELL trademark infringement case, the court held that the evidence cannot show DAI ER in Chinese is the only translation of DELL, and Dell Inc. has not used DAI ER in Chinese as the corresponding Chinese translation of DELL for quite a long time in its initial market entry. Therefore, the public’s awareness of DELL due to Dell Inc.’s promotion cannot cover the mark DAI ER in Chinese. In the recently debated MICHAEL JORDAN invalidation case, the courts held that even if MICHAEL JORDAN is translated into MAI KE·QIAO DAN in Chinese, the QIAO DAN in Chinese contained in the disputed mark does not exclusively associate with JORDAN, and JORDAN is a common family name instead of a full name. The evidence fails to prove QIAO DAN in Chinese has certainly referred to MICHAEL JORDAN and MAI KE·QIAO DAN in Chinese.
Corresponding association affirmed in one case, while denied in another case
In the LAFITE invalidation case, the courts including the China Supreme Court held that no evidence shows LA FEI or LA FEI ER has established corresponding association with LAFITE prior to the application date (2002) of the disputed mark LA FEI ER in Chinese. However, in the LAFITE trademark infringement case, another local court held that LA FEI in Chinese is the mere corresponding Chinese translation of LAFITE at or before 2010 when the lawsuit is filed. The key issue here is the different time points required for the evidence: in the invalidation case, the evidence is prior to the application date (2002) of the disputed mark; in the trademark infringement case, the evidence is prior to the first use date (2010) of the accused Chinese mark.
Elements for establishing the corresponding association
Based on court decisions, the elements for establishing the corresponding association between the Chinese equivalent and the English mark include the following five aspects:
1) No matter what “active use” is by the owner of the English mark, or the “passive use” by the media, public or third parties, the key issue is whether the corresponding association between the Chinese equivalent and the English mark has been established;
2) For the “passive use,” if the owner of the English mark has denied the Chinese equivalent, the Chinese authorities will not deem such a Chinese equivalent similar to the English mark;
3) Evidence shall show the English mark enjoys relatively high fame, and the corresponding association between the Chinese equivalent and the English mark has been established;
4) The existence of several Chinese translations for the English mark will not affect the establishment of a corresponding association between the major Chinese translation and the English mark;
5) The evidence shall be used prior to the application date of the trademark at dispute or prior to the first use date of the accused Chinese mark.
To better protect the Chinese equivalent of the English mark, foreign brand owners may consider the following measures:
1) File trademark applications for the Chinese equivalent as soon as possible, at least for defensive purpose. China adopts the first-to-file system as the basic principle for trademark registration and protection. Foreign companies, especially marketing or business departments thereof, shall be very cautious when they intend to deny a Chinese equivalent of its English trademark;
2) Select a proper Chinese translation of the trade name when filing the trademark application, especially when the trade name is identical to the English trademark. Sometimes foreign companies use different Chinese translations for its trade name probably because the applicants are handled by different local law firms. Some foreign companies failed to select a Chinese equivalent for its English mark during the long process of entering China market;
3) Regularly monitor suspected trademark applications filed by third parties, and take the necessary measures in a timely manner;
4) Collect sufficient evidence to establish the use and fame of the English mark as well as the close or corresponding association between the Chinese equivalent and the English mark. The evidence shall focus on those formed prior to the application date of the mark at dispute or prior to the first use date of the accused Chinese mark.
Jason Wang, Partner, Beijing East IP Law Firm
Jason has successfully obtained in China well-known mark recognitions for Yahoo!, Google, Ritz Carlton and Yamaha. He has won various high-profile cases, including retrials before the China Supreme Court and China Courts 2013 Top 10 Innovative IP Cases.
Yan Zhang, Partner, Beijing East IP Law Firm
Yan Zhang has handled various high-profile and complicated trademark cases representing Fortune 500 companies and leading multi-nationals such as Freddie Mac.