As the Chinese market continues to grow at a rapid pace, an
increasing number of international and transnational companies
seize business opportunities to sell goods in China by opening
branches or subsidiaries. One of the positive consequences is that
their trade names and trademarks become increasingly well-known in
the market. An adverse affect of this popularity is that some
Chinese competitors may try to use the Chinese language
translations of these popular foreign-language trademarks to
piggy-back on the reputation of the foreign company.
Foreign companies often fail to register the Chinese-language
translations of their international trademarks, which severely
limits their options to combat these kinds of practices.
Traditionally, Chinese courts are unlikely to support the foreign
company's opinion that the Chinese language translation is
"similar" to its registered trademarks (as defined by the
PRC Trademark Law). In that case, the Chinese company's act
does not constitute trademark infringement or unfair competition,
and there is little that the foreign trademark owner can do against
Fortunately some hope can be drawn from a case listed in the
Annual Press Release regarding Judicial Protection of Intellectual
Property and Model Cases of 2012m published by the Supreme
People's Court ("SPC") on 22 April 2013: the
"Leroy-Somer" Trademark Infringement and Unfair
Competition Case may well form a prelude for foreign companies to
prevent Chinese companies from using Chinese language translations
of their international trademarks. The key issue in this case is
whether similarity can be established between trademarks in foreign
languages and their Chinese character translations. Although the
Plaintiffs did not register any Chinese-language trademarks in
China, the Superior People's Court in Fujian Province
(hereinafter "the Court") finally confirmed the
similarity between "LEROY-SOMER" and its Chinese
In its conclusion, the Court takes a different view on
similarity that has been prevalent in similar judicial cases and/or
trademark administrative reviews. Certainly this establishment of
similarity can be attributed to the adequate evidence submitted by
the Plaintiff, proving without doubt the existence of a
corresponding relationship between "LEROY-SOMER" and
"利莱森玛". In addition, to quote
from the "Brief Introduction to the Top Ten Innovative
Intellectual Property Cases in China (2012)" by the SPC,
"the famous nature of the foreign language trademarks, the
Plaintiff's prior use of the Chinese translation version, and
public recognition of the corresponding relationship between the
foreign language trademarks and its Chinese language
translation" all give credit to the fixed corresponding
relationship, and thus the similarity, between
While this judgment gives hope, it should be remembered that the
issue of similarity will always be decided on a case-by-case basis.
If the Plaintiff cannot submit sufficient evidence to support a
claim of concurrent use of their foreign language trademark and the
Chinese character trade name, as well as the level of recognition
of its trademark and/or trade name, then a court will certainly
deny similarity, and therefore alleged trademark infringement and
Another noteworthy aspect from this case is how to prove the
level of reputation of the trademark. In the words of the SPC,
"the famous nature of the foreign language trademarks"
should be given consideration in deciding similarity. However, the
SPC does not mention the definition of this famous nature, or to
put it differently, to what extent a foreign trademark would be
famous enough to establish such similarity. This issue is also
important when deciding the amount of damages. If a foreign
trademark enjoys a high-profile status, the amount of damages may
even break through the statutory damage ceiling of RMB 1
It is unwise to count on this new wind alone to protect
Chinese-character translations of (well-known) international
trademarks. Yes, it is good news that the SPC seemingly has set a
new precedent; on the other hand, by far safest, cheapest and most
effective way to ensure that the owner of a foreign-language
trademark also has the exclusive rights to the Chinese-language
equivalent, is to file for registration of this trademark in China
in relevant classes. This will ensure not only that third parties
are barred from use, but will also allow the owner to control under
which Chinese-language trademark it will be known in the market.
Considering the many positive and negative connotations of words in
China, this benefit alone should make the decision to initiate
registrations, an easy one.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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