谷歌 (Google) Defeats “Business Disruption” Claim Over Use Of Its New Chinese Brand Name
By: DEAN R. KARAU
News stories from China report that in late December 2007, Beijing’s Haidian People’s Court dismissed a “business disruption” lawsuit brought against Google China (谷歌信息技术（中国）有限公司). Beijing Gu Ge Science & Technology Ltd (北京谷歌科技有限公司) claimed that Google China’s new trademark, 谷歌, pronounced “Gu Ge,” was the same as the Beijing company’s business name.
Google China, founded in 2005, now serves an estimated 150 million plus Chinese Internet users. However, from the beginning, Chinese had difficulty pronouncing “Google.” Some used Google’s English name, while others called the company “Gougou” (“doggy”) or “Gugou” (“old hound”).
Therefore, in April 2006, Google officially launched use of a new Chinese brand name, 谷歌, which means “harvest song.” According to Google, the new name conveys “the sense of a fruitful and productive search experience, in a poetic Chinese way.”
In the suit commenced in June 2007, Beijing Gu Ge, an online shopping service, asserted that both companies use 谷歌, which allegedly causes confusion. According to Beijing Gu Ge, people looking for Google China in local telephone directories found Beijing Gu Ge instead. Beijing Gu Ge first asked Google to change its name, and then brought suit. Beijing Gu Ge asked for an order forcing Google to change its name, but it did not seek any monetary damages.
Beijing Gu Ge opened for business on 19 April, 2006, one week after Google announced its new Chinese brand name. However, Beijing Gu Ge claims it applied to use the business name 谷歌 in March 2006, before it commenced business operations. Google China countered by asserting that it filed various trademark applications for its new brand name in January 2006.
It is unclear from the press reports the weight, if any, the court placed on the date Google China filed its applications to register its trademark rights. Instead, and fortunately for Google China, the court found that Google China had begun using its new name seven days before Beijing Gu Ge opened its doors for business. Because of that, the court said that Google could not have knowingly acted to disrupt the Beijing company’s business by its use of 谷歌.
The reports from China seem to indicate that the court distinguished between use of a term as a business name, as the Beijing company used and registered 谷歌, and use of a term as a trademark, as Google China used and registered 谷歌. If both parties had claimed trademark rights in 谷歌, then whoever filed its application first would have had presumptively superior rights. However, it appears that because the Beijing company had not filed a trademark application for its name, it could not claim trademark infringement. Instead, it could only assert “business disruption” and thus had to prove that Google China intended to cause the confusion. Because Google China actually began use of its name before the Beijing company began doing business, no such intent could exist.
Beijing Gu Ge has not indicated whether it will appeal the decision. Google China has not issued any comment.