Update: The Road to China: Now Is The Time To Protect Your Trademarks

By: DEAN R. KARAU

February 2008

Signs of improved IP enforcement efforts in China mean that now, more than ever, it is important that you begin protecting your valuable trademarks in China.”

In the November 2006, article, The Road to China: An Overview of the Changing Landscape for Trademarks, we wrote about trends in improved respect for intellectual property as societies develop:

We are watching China to see if it follows a transformation similar to the U.S., Japan, and other societies before them. Odds are strong that it will.

Below are some recent events that continue to suggest that China’s IP enforcement is continuing to improve.

Lacoste Wins Trademark Infringement Suit

In June 2007, a Beijing court ordered three Chinese companies to pay French clothing giant Lacoste a total of $98,700 US dollars (760,000 Yuan) in damages for trademark infringement.

Lacoste sued three defendants for trademark infringement in July 2006. The suit was based on one defendant’s registration of a “Golden Crocodile” trademark that consisted of a crocodile, waves and two Chinese characters. The company only used or highlighted the image of the crocodile, rendering it almost identical to Lacoste’s logo.

All three defendants shared in paying damages to Lacoste. The manufacturer of the garment will bear the largest portion of the fine. All existing garments bearing the infringing trademark must be destroyed.

The famous Lacoste crocodile trademark is registered in 192 countries and has been in use in the U.S. since 1950 and in Europe since 1935.

2008 Olympics Increases Intellectual Property Enforcement

China, faced with loss of revenues from the sale of “unauthorized” Olympics merchandise in connection with its 2008 Olympics games, has increased its focus on intellectual property enforcement.

Authorities have investigated about 80 commercial and personal websites selling fake Olympic merchandise, or lacking licenses to sell the legitimate product.

Law enforcement agencies seized nearly 30,000 finished or half-finished Olympic knock-offs in Beijing earlier this year, and arrested a man in the southern island province of Hainan who cheated Internet users out of a suspected 400,000 Yuan ($54,000) through a fake version of the official Games Web site www.beijing2008.cn.

Anheuser-Busch Obtains Maximum Damages for Willful Infringement

In August 2007, the Shanghai First Intermediate People’s Court ruled in favor of Anheuser-Busch Inc., ordering a Chinese brewer to stop its trademark infringement and to pay compensatory damages of RMB 500,000 (US $66,667) and punitive damages of RMB 100,000 (US $13,333), plus ordering four of the brewer’s distributors to immediately stop selling the infringing products.

Anheuser-Busch registered its BUDWEISER mark (百威) in China in 1998, and owns other related registered trademarks, including the word mark BAIWEI (the transliterated Chinese character mark for BUDWEISER) and a design mark comprising a ribbon and an ear of wheat (Budweiser design mark).

In 2006, Anheuser-Busch discovered that four of its Chinese brewers’ distributors were using a mark that was similar to the Budweiser design mark and were also using the words “American Budweiser Beer International Group Co Ltd” on their product packages. Anheuser-Busch filed trademark infringement proceedings against the brewer and its four distributors.

The court held that the label and design mark were similar to the Budweiser design mark, and would mislead customers. The court also found that the BUDWEISER mark enjoys a good reputation with customers in China, and the company, as a professional brewer, should have known of Anheuser-Busch and its BUDWEISER mark. The court also found that the brewer also infringed Anheuser-Busch’s BAIWEI mark.

Because the court could not determine the company’s profits obtained from the infringement or Anheuser-Busch’s loss suffered by the company’s infringement, it ordered the company to pay the statutory maximum available.

谷歌 (Google) Defeats “Business Disruption” Claim Over Use Of Its New Chinese Brand Name

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.

(Click here to see the complete article in the January 2008 issue of Trademark Topics.)

How Do You Say “Irony” in China? Silk Street Applies to Register A Trademark

Silk Street’s operator has filed an application to register a trademark for the Silk Street brand for clothing and other items, in part hoping it will help change Silk Street’s reputation, and in part attempting to capitalize on its popularity with foreign tourists attending this summer’s Olympic Games.

(Click here to see the complete article in this issue of Trademark Topics.)

 

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These signs of improved IP enforcement efforts in China mean that now, more than ever, it is important that you begin protecting your valuable trademarks in China.