Filing a trademark in foreign language and/or in Chinese language?

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 consequences.

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 infringing mark.

New Balance appealed. The case is now under trial by the higher court.

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 "Ka-Si-Te".

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.

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 1998.

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 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 "索尼爱立信" (Suo-Ni-Ai-Li-Xin), 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 "Suo-Ai" trademark.

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 dismissed.

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.

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), "杰弗里乔丹" (Jie-Fu-Li 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 again.

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 strategy.