In China, if you want to find a McDonald's store and ask for
directions saying "McDonald's", you may probably get nowhere.
However, if you say "Mai-Dang-Lao", which is the Chinese
transliteration of McDonald's, then you will immediately be
directed to the closest shop. This example shows why it is
essential to file a trademark in Chinese language in China.
A well-chosen Chinese mark is easily accepted by Chinese
consumers, and this can help marketing the product in China. A
good example is Coca-Cola's Chinese name
"可口可乐" (Ke-Kou-Ke-Le, literally
means "tasty and pleasing" in Chinese).
China follows the "first-to-file" principle. Therefore,
whenever you prepare for filing your trademark in your own
language, do it in Chinese at the same time.
If you don't, you might have to face negative and costly
Choose and register Chinese mark without
New Balance vs Lelun Zhou
New Balance Athletic Shoes Inc. ("New Balance"), owns the
English mark "NEW BALANCE" on shoes since 1983, but the Chinese
trademark "新百伦" (Xin-Bai-Lun), was adopted
and used much later in 2003.
Before that, a Chinese individual, Lelun Zhou, had filed
applications for the Chinese mark "百伦" (Bai-Lun)
in 1994 and "Xin-Bai-Lun" (Xin means "new") in 2004.
New Balance had opposed Zhou's trademark "Xin-Bai-Lun", but
failed and it was approved for registration.
In 2013, Lelun Zhou sued New Balance and its distributor for
trademark infringement. In 2015, the Guangzhou Intermediate
Court recognized the infringement and ordered New Balance to
pay an amount of US$15 million as damages, half of New
Balance's profits in China. The court held that, New Balance
was aware of the risk but still continued the use of the
New Balance appealed. The case is now under trial by the
Castel vs Daozhi Li Yu
CASTEL FRERES S.A.S ("Castel") had been using the Chinese
mark "卡斯特"(Ka-Si-Te) on wine since August
1998, but Castel did not register this Chinese mark.
A Chinese company in Wenzhou applied for the registration of
the trademark "Ka-Si-Te" in September 1998, and obtained the
registration in March 2000. The mark was later transferred to a
Chinese-Spanish Daozhi Li Yu.
Castel tried to settle the issue by trademark purchase
negotiation, non-use cancellation and invalidation, but all
failed. Meanwhile, Castel was still using the Chinese mark
In 2009, Daozhi Li Yu sued Castel and its distributors for
trademark infringement. In 2012, the Wenzhou Intermediate Court
recognized the trademark infringement and ordered Castel to pay
an amount of US$5 million as damages. Castel appealed. The
higher court maintained the judgment. Castel filed a re-trial
application to the Supreme Court and decided to change its
Chinese mark to "卡思黛乐"
("Ka-Si-Dai-Le"). In January 2016, the Supreme Court rendered
its judgment, reducing the amount of compensation to US$77,000,
which was a relief for Castel.
Conclusion: When you launch a
product under a foreign brand, do not assume that this will be
sufficient to protect you against the use of a Chinese
equivalent. Always create and use the Chinese equivalent. Of
course, be careful when you choose the Chinese mark, and do
risk assessment before deciding whether to continue using the
trademark if it is in conflict with a prior right.
Be tolerant and smart when dealing with a
Pfizer vs Viamen
Pfizer Inc. ("Pfizer"), is the owner of the mark "VIAGRA",
which was filed in China in October 1996. Two years later,
Pfizer adopted a Chinese name "万艾可"
(Wan-Ai-Ke) and filed the application in July 1998. However,
the Chinese media and consumers had already created a sort of
"nick name" for the Viagra blue pill, "伟哥"
(Wei-Ge), which means "big brother". This name was already
popular and widely accepted.
A Chinese company, Guangzhou Viamen Pharmaceutical Co., Ltd.
("Viamen"), filed the application for "Wei-Ge" in June
Pfizer opposed Viaman's application, lost, appealed, and
lost again. The court found that, Pfizer had never advertised
its products under the name "Wei-Ge", and on the contrary,
claimed that its Chinese mark was "Wan-Ai-Ke". Pfizer sued
Viamen, in a civil action, trying to stop the use of "Wei-Ge"
but failed again, as Viamen was able to resist such action by
claiming its registered trademark.
Sony Ericsson vs Jianjia Liu
Sony Ericsson Mobile Communications AB, is a joint venture
set up in 2001, between Sony Group and Ericsson Group. It is
the owner of the Chinese mark
which is the transliteration of "Sony Ericsson".
However, such a long name was soon shortened by the
consumers to become "索爱" (Suo-Ai) and this short
version became widely accepted. But, Sony Ericsson did not
admit this abbreviation, at least not until October 2007.
A Chinese individual, Jianjia Liu, had filed a trademark
application for "Suo-Ai" in March 2003 and had obtained the
registration in August 2004.
Sony Ericsson filed an invalidation application against this
mark in June 2005. The TRAB refused the invalidation and
maintained the registration of "Suo-Ai".
Sony Ericsson appealed. The first instance court overturned
the TRAB's decision and cancelled the trademark, finding that
"Suo-Ai" is widely accepted by the Chinese consumers as the
source identifier of Sony Ericsson's products and that Jianjia
Liu had not been acting in good faith when he registered the
Jianjia Liu appealed. The second instance court reversed the
judgment, finding that, Sony Ericsson had no evidence of prior
use of "Suo-Ai", and had even denied many times that "Suo-Ai"
was the abbreviation for "Suo-Ni-Ai-Li-Xin". So, Sony Ericsson
did not own the mark "Suo-Ai". Sony Ericsson filed a re-trial
application with the Supreme People's court, but was
Conclusion: It was not a good
option for Pfizer and Sony Ericsson to deny the relation
between their names and the Chinese nick names created by the
consumers. If they had taken appropriate actions when the
nick-name came out, the situation may have been in control. A
nick-name is not always bad, and it can constitute an extension
of your protection.
The names of celebrities are easy
Michael Jordan vs Qiao Dan
Michael Jordan, famous NBA player, is widely known and
recognized by Chinese people as "乔丹" (Qiao-Dan,
Chinese transliteration of his last name Jordan). Michael
Jordan and Nike Inc. ("Nike") cooperated to launch the world
famous basketball shoes since 1985. Nike registered the mark
"MICHAEL JORDAN" in June 1991, but never registered the
corresponding Chinese transliteration.
A Chinese company, Jinjiang Mai Ke Shoes and Plastic
Company, which later change its name to Qiao Dan Sports Co.,
Ltd., in 1999, filed the logo mark (flying man), and in 2000, the words
"Qiao-Dan" in Class 25. Both were recognized as well-known
trademarks by the Trademark Office. It later registered over
200 Qiao-Dan related trademarks, including (jersey number 23),
Qiao-Dan, the Chinese name of Michael Jordan's elder son
Jeffrey Jordan), "马库斯乔丹"
(Ma-Ku-Si Qiao-Dan, the Chinese name of Michael
Jordan's younger son Marcus Jordan).
Nike Inc. took opposition/invalidation actions against the
earlier trademarks, but failed. Then, Michael Jordan himself
came out and continued the fight, but lost before the courts
Michael Jordan filed re-trial applications to the Supreme
Court, and the court hearing was conducted in April, which may
be a positive signal.
Conclusion: Foreign celebrities
are commonly referred to by the Chinese transliterations of
their last names. This should be included into your filing