Trademark Law in the U.S. & China

After briefly discussing some prominent companies and their well-known trandemarks both here and in other parts of the world, I came across a case that discusses an interesting situation between a well-known company here in the U.S. (Sony Ericsson) and a recent instance of trademark law.

Sony Ericsson is currently of great interest to foreign companies doing business in China. In an article I found the author notes, “a number of famous marks have had problems in China with bad faith registrations by third parties. If somehow the registration of the mark in China has been overlooked, the third parties will register the mark in the Latin alphabet. And if not they will try to register the Chinese characters.”

Sony Corporation has been doing business in China for many years. Its Chinese character name, pronounced "suo-ni", is well recognized throughout China. Ericsson, a Swedish company, was founded in 1876 and it too has a Chinese character name, pronounced "ai li xin". In 2001 the two comapnies formed a joint venture to manufacture and sell mobile phones. The problem of registering the new name Sony Ericsson in Chinese characters as a trade mark then became apparent.

Unfortunatlely for Sony Ericsson, an astute Chinese businessman, Liu Jianjia from Guangzhou, southern China, filed an application to register the mark pronounced "suo'ai" with respect to DVD/CD players, mobile phones, speakers and entertainment goods, cassette players and the like on March 19, 2003 (No. 3,492,439). Sony Ericsson opposed the application but the mark was registered on August 7, 2004. Sony appealed to the Trade Mark Review and Adjudication Board ("TRAB") but it lost again. China is a first-to-file jurisdiction.

Ultimately, Sony Ericsson took Mr. Liu Jianjia to court and a decision was made on Aug. 10, 2008. “The Court said that the joint venture between Sony and Ericsson was widely reported in the press and that therefore Mr. Liu would obviously know about it. Therefore his actions do not have a clear legitimacy. Mr. Liu’s application for the mark was in violation of the principle of good faith. Accordingly the Court ruled that the decision of TRAB in favor of Mr. Liu was overturned and that the opposition by Sony Ericsson to the registration of the mark by Mr. Liu is to be reviewed again by TRAB.

You can read the article in it’s entirety at http://www.lawdit.co.uk/reading_room/room/view_article.asp?name=../articles/9104-Sony-Ericsson-and-other-Trade-Marks-in-China.htm