A global IT company well known for its iconic trademark “Apple” lost the battle over the ownership of its trademark in China and entered a settlement by paying USD 60 million (KRW 68.8 billion) in 2012. What is more shocking is that Apple was not the only global conglomerate which had been dragged into disputes involving trademarks in China. Heremes, Michael Jordan and other global trademark holders have to fight fiercely to protect their trademarks in China. This trend is attributable to the nationalism of the Chinese court which shows strong tendency to side with its own nationals and decide in favor of them in trademarks cases.
It has been reported that not a few Korean companies are involved in trademark related disputes in China. KBS, the major public broadcasting company, filed a complaint with the Trademark Office State Administration for Industry and Commerce of the People's Republic of China (the “Chinese Trademark Office”) in 2008 against a Chinese advertising agency which had applied for the registration of “KBS” as its trademark in 2004. The case was dismissed in 2011 by the Chinese Trademark Office and KBS appealed from such dismissal to the Trademark Review and Adjudication Board in China which eventually ruled in favor of KBS, the appellant, and ordered that the appellee Chinese company should cancel its registration of the trademark of KBS. Recently, another Korean company engaging in the business of producing component parts of automobile (the “Company K”) had to win an administrative lawsuit to protect its trademark in China. These success stories tell us that it is not completely impossible to protect trademarks of Korean companies in China, but at the same time how much efforts it has to make and how aggressively it has to fight to win a trademark case in China.
The automobile component parts manufacturer’s case above evidences well how important to make relentless efforts to protect its trademark and have professional assistance from well qualified and competent legal counsels. The Company K filed a complaint with the Chinese Trademark Office against the registration of the same trademark by a Chinese national. The Chinese Trademark Office found against the Company K which lost its case again upon appeal to the Trademark Review and Adjudication Board. It was able to have the right to its trademark recognized in China only after it had to go all the way up to the Chinese court by instituting an administrative lawsuit and won the case both at the first instance court and the appellate court. The result would have been very detrimental to the Company K if it had lost its case at the court. It would have faced enormous difficulties to export and sell its products in the Chinese market and must have ended up with paying substantial amount as Apple did to get the trademark registered in China assigned by a Chinese national to the Company K.
However, Yoon & Yang LLC achieved the victory in the administrative lawsuit by successfully arguing before the court, in partnership with a Chinese law firm, that the trademark of the Company K had been widely used prior to the defendant’s registration of the same trademark and thus had substantial consumer awareness in automobile component parts industry. It is strongly recommended that Korean companies which already have their presence in the Chinese market and those companies which consider launching their businesses in China should closely follow up on the trademark dispute cases in China and take proactive approach to guard against such disputes in China.