Worldwide: Trade Marks In The Far East

Last Updated: 11 July 2017
Article by Manisha Bugwandeen-Doorasamy

Most Read Contributor in South Africa, August 2018

An increasing number of African companies do business in the Far East, and many of them register their trade marks in the region's major markets. So, it's interesting to look at trade mark developments in the major markets from time-to-time. In this article, we look at some recent decisions in China, India and Japan.

China

China is probably the major market for most African companies and we have discussed Chinese trade mark issues in a number of our articles. We've looked at how Chinese trade mark law has changed over the years and, particularly, how the harshness of the "first to file" system – a system that made it all too easy for Chinese companies to hijack valuable foreign brands – was mitigated by changes to the law that introduced a good faith requirement. As a result, registrations obtained by local companies could be challenged, and attorneys could even be called to account. We also discussed how the introduction of a multi-class trade mark filing system made it easier for foreign companies to get the protection they need for their brands in China. On the enforcement side, we saw how a Chinese court found in favour of the multinational company 3M when it was faced with an infringement by a local company that called itself 3N, and how the court made a significant damages award against the local company.

In a recent case, the Scotch Whisky Association ("SWA") was able to enforce a collective trade mark registration that it has for the term for Scotch Whisky (as well as the transliteration of the term) in class 33 for whisky. When SWA discovered that two Chinese companies, Shanghai Make Lipu Wine Co Ltd and Qingdao Make Lipu Co Ltd, were using the terms Scotch Whisky: Imperial Prestige Scotch Whisky 12 Years, and Imperial Prestige Scotch Whisky 18 Years, it sued for trade mark infringement. The first court found in SWA's favour, and made the point that the products of the Chinese companies did not originate in Scotland, did not comply with the standards set, and would therefore cause consumer confusion. The court ordered the infringers to pay substantial damages. The Chinese companies took the case on appeal to the Shanghai IP Court, which upheld the first court's finding.

India

India is a huge market that presents some enticing opportunities. The Swedish furniture giant Ikea seemingly has big plans for India – it wants to establish no fewer than 25 Ikea stores. As part of a trade mark clearance exercise, Ikea recently took 12 Indian companies to court for alleged trade mark infringement, claiming that they had "copied and imitated" the trade mark Ikea, or used trade marks that were "wholly and absolutely similar, identical with and deceptively similar."

Ikea managed to get ex parte injunctions against these companies; in other words, injunctions without any appearance by the other side. One of these injunctions was against a human resources firm called Ikya, a second was against a consulting company called Aikya Global. Aikya Global decided to take this matter further and a New Delhi court has now found in its favour, holding that there is no trade mark infringement. A pyrrhic victory as it turns out – we understand that Aikya Global has already changed its name to Ajira Global.

Japan

In a recent case, a UK-based retailer and manufacturer of baby goods (prams, pushchairs, etc) that does business under the name Mamas & Papas failed in an action to cancel a Japanese trade mark registration for the name Papa's & Mama's that covers goods such as bags (class 18) and services such as beauty treatments (class 44). Although the finding perhaps isn't that surprising given the differences in the goods and services, the court does seem to have made a point of saying that the marks are very different. It said that the trade marks are visually different because the order of the words is reversed in the mark under attack, and because that trade mark uses the possessive form. It went on to say that the trade marks are phonetically very different for the same reason. The conceptual similarities between the trade marks do not seem to have featured in the court's reasoning very strongly. This perhaps isn't that surprising, given that the meanings of the two trade marks may be unclear to non-English speakers.

In our view, these recent decisions are positive and should encourage companies that do business in the Far East to protect their trade marks in major markets. The decisions suggest that the trade mark rights of foreign companies are being taken seriously, and will be enforced against local companies. They do, however, also suggest that abuse of trade mark rights won't be tolerated, which is also a good thing. Lastly, they remind us that issues of language should never be overlooked, and that it cannot be simply assumed that everyone understands English.

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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