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A recent trademark ruling in China has underscored the importance of early filing of trademark applications – for both the brand names themselves, as well as the Chinese versions of the brand names (i.e., the brand’s phonetic equivalent and meaning equivalent written in Chinese characters) – any time a brand owner’s future plans may include China, even if the move to China is not imminent.
What “First-to-File” Means To U.S. Brands
China’s trademark law provides for a “first to file” system. The result is that if someone other than the U.S. brand owner files an application to register any version of a mark in China before the brand owner does, the brand owner can effectively be blocked from using its brand name in the Chinese market. Alternatively, if another company registers a Chinese character version of a mark before the brand owner does, the brand owner could be faced with a competitor selling competitive products with a trademark that is pronounced exactly like its brand.
Even If You’re Michael Jordan
Once that happens, it can be difficult and expensive to remedy the situation, and even well-known brands are not immune. Often, as soon as a brand develops a reputation in China, even if the branded products have not yet been introduced there, someone may apply to register a Chinese character version of the brand name. This was the situation in the ruling referenced above, where a Chinese sportswear company obtained numerous trademark registrations for the Chinese character version of “Jordan,” which it used together with the number 23 (Jordan’s jersey number) and the “air Jordan” silhouette. The China court rejected Michael Jordan’s request to cancel the trademark registrations, finding that, notwithstanding Jordan’s fame in the U.S., consumers would not be confused by the Chinese company’s use of the Chinese character version of “Jordan.”
Although this issue exists in every foreign country having its own alphabet, because China is such a large and valuable market, and because the adoption of marks similar to well-known brand names is common in China, we encourage our clients to speak to us about these issues so that rights are not lost.
About JMBM’s Intellectual Property Group
JMBM’s Intellectual Property Group represents entrepreneurs, family-owned businesses, middle-market companies, startups, universities and the FORTUNE 500. Our lawyers handle all types of intellectual property, including patents, trademarks, copyrights, domain names, trade dress, and trade secrets. Our IP lawyers assist clients in connection with building, managing, and protecting comprehensive and worldwide intellectual property portfolios, as well as in related transactional and litigation matters.
