Not Trademarked In China? Don’t Bother Reading This, Just Get Going

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The China Daily uses the ongoing frenzy around the Euro 2012 soccer football tournament to revisit a known, but not well known enough, phenomenon in China. Namely, names being registered in China by people who have nothing to do with the trademarked names themselves.

As The China Daily notes, “Philipp Lahm, Cristiano Ronaldo and Andres Iniesta are world-popular soccer stars, but they have also attracted attention that they might not want — from Chinese companies registering their names as trademarks.”

Anyone charged with protecting a brand, or who might BE a brand, should drop what they are doing immediately and check to see if your brand has been registered in China without your approval, spelling your doom. Don’t even bother reading the rest of this piece on China and trademarks. Go check.[more]

The China Daily checked in with the Southwest Trademark Service, a Chongqing-based trademark agency, which says that 24 percent of all the players in Euro 2012 (88 of 368) have had their names trademarked in China. Spain’s Xavier Hernandez Creus alone has 22 products trademarked under his name in China.

And not that those 22 products have to have anything to do with football, Spain, or even athletics. In 2006, NBA star Yao Ming managed to successfully block the trademarking of his name for — wait for it — a line of women’s tampons.

Adding to the confusion about trademarked names in China is the whole issue of translation (Insert “lost in translation” pun here).

One recent example of this is Michael Jordan’s move to stop Qiaodan Sports Co., a multimillion dollar athletic brand that not only uses a logo that’s clearly a ripoff of Nike’s silhouetted Air Jordan mark, but also uses the translation of Jordan’s name in Chinese, “Qiaodan” (乔丹), as its brand name.

Qiaodan obtained the trademark in China in 1999, but Jordan only filed the challenge this year. According to a case study by China IP lawyers Vivian Chang & Co., “a market survey in Shanghai shows that 90% of 400 local people believed that Qiaodan Sports was Jordan’s brand.”

Obviously, the question here is not if Jordan owns the trademark to “Jordan,” but if he owns the mark of his Chinese name. Unfortunately or fortunately, depending which side you’re sitting on, Qiaodan probably did itself few favors by also copying the logo more or less directly.

Using the terms “trademark” and “China” in combination will probably invite comparisons to Apple’s ongoing battle over the iPad mark. But Apple’s fight with Proview is entirely different, and more a conundrum of language and nuance and oversight, as Apple thought it had secured the mark for China.

A better example would be Angry Birds, which only recently went whole hog into the China market after at least one snack food brand had registered an Angry Birds mark.

Then there is Facebook. In February, at the same time Jordan was moving to take on Qiaodan, Facebook started getting aggressive. No surprise, it’s China IP counsel found boatloads of problems. A Los Angeles Times report noted that Facebook’s name was on everything from condoms and soccer shoes, “even though the social media site is banned in China.”

“There is absolutely no reason to wait on China trademarks. In a first-to-file jurisdiction, any delay can spell doom.” That is how Stan Abrams, a Beijing-based IP/IT lawyer and law professor, responded to our questions about when a brand should act in China. Abrams regularly blog about China law, business and politics at China Hearsay.

Abrams further tells us, “In many instances, whoever gets the mark filed first will secure  rights, period. Because the China Trademark Office maintains a free, searchable online database, there is absolutely no excuse for a company to remain in the dark when it comes to trademark-squatting, at least for marks in their native language.” Abrams knows that “many SMEs do not have the resources to initiate an aggressive filing campaign,” so he says “it is possible to start off protecting a mark(s) with respect to a core business or products and then increase the scope of protection in the future.”

Meanwhile, to prove just how fast Chinese trademark squatters can act, a Reuters reporter found that just as Jeremy “Linsanity” Lin was getting his big star-making break, a sporting goods company in China “saw potential in the Harvard-educated Chinese-American more than a year and a half ago — and quietly registered his trademark for $700.”

With Lin (whose lawyers are all over Linsanity poachers) in mind and back to the China Daily‘s focus on Euro 2012, is it fair to say that sports agents who do not immediately pursue China trademarks for their clients are negligent? Abrams says no: “I wouldn’t go so far as to use the word negligent. It’s not at all standard practice, neither is it the responsibility of ad agencies or even law firms to inquire into trademark status.”

Abrams concludes, “That being said, an agent that moves quickly on trademark issues brings added value to their clients and is definitely a cut above the competition. Someday, China trademark searches might be standard operating procedure for agents.”

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