Administrative Litigation Relating to a Trademark Disputed Proceeding Case

Facts and Procedure:

Sony Ericsson lodged an appeal before the second-trial court for a trademark dispute proceedings case. In particular, the background of the case is as follows;

LIU applied for registration of a trademark"Sony Ericsson"(the disputed mark) in respect of goods “telephone etc." on March 9, 2003 and the application was approved for registration under Reg. 3492439 on August 7, 2008 by the Trademark Office of China (CTMO).

Sony Ericsson lodged a dispute proceeding against LIU' mark before the TRAB on June 7, 2005 on the grounds 1)"Sony Ericsson"is a unregistered well-known mark possessed by Sony Ericsson; LIU preempted the disputed mark in bad faith; the registration and/use of the disputed mark will mislead the consumers, and damage the benefits and interests of both Sony Ericsson and the general public. It is of the TRAB' opinion that the evidence provided by Sony Ericsson was not sufficient proving"Sony Ericsson"was an abbreviation form"Sony Ericsson"(the equivalent Chinese translation to Sony Ericsson), further, the presented evidences proved neither"Sony Ericsson"was well-known to the public before the filing date of the disputed mark, nor proved the mark had been used by Sony Ericsson and had gained fames to some extent. In that case, the registration of the disputed mark was ruled to maintain valid.

Not satisfied with the verdict from TRAB, Sony Ericsson lodged an administrative litigation before the No. 1 Intermediate Court afterwards, and the court ruled that the decision from the TRAB was revoked based on the findings and reasons as follows. Sony Ericsson was established in China in August 2002, and during the period from August 2002 to March 2003,"Sony Ericsson"was used by related media when reporting the mobile phone of Sony Ericsson; Sony Ericsson, as a company, obviously had a higher fame than other concurrent existed companies; LIU was a person who engaged in the field of electronic communication, he should know the above-mentioned facts.

Mr. LIU then brought the case to The Beijing Higher People's Court, the appealed court held that the use by the media was not by Sony Ericsson itself, and until October 2007, Sony Ericsoon did not consent that"Sony Ericsson"was an abbreviation form of either their company or their cell phone products, specifically, the evidence showed a vice president and general executive of China division of Sony Ericsson once declared: “we are not"Sony Ericsson", we are"Sony Ericsson", and I beg all of your people calling us"Sony Ericsson"or “Sony Ericsoon”, not"Sony Ericsson". Finally, the appealed court upheld the decision from the TRAB and the verdict from the first-trial court was revoked.

[Note: The disputed mark is currently registered and valid, still.]

Significance of the Case:

Given the language issues, the localization for foreign trademarks from those oversees companies sometimes is an important and key issue. Generally, Chinese public is not quite familiar with the pronunciation of foreign words, and they prefer to call foreign language marks in a Chinese way, even in that event that there is no equivalent Chinese mark available.

As a matter of this case, since the use of the Chinese mark"Sony Ericsson"by media and the public has not been considered to be used by the party itself, Sony Ericsson then lost its case, and the verdict has a great influence on similar cases until now.

Key Law Articles:

The Trademark Law of China

Article 10The following words or devices shall not be used as trademarks:

......

8) those detrimental to socialist morals or customs, or having other unhealthy influences.

Article 13Where a mark is a reproduction, imitation, or translation of a third-party's famous trademark which has not been registered in China and where the goods are identical or similar, which may cause public confusion and damage the interests of the registrant of the famous mark, no registration shall be granted and the use of the mark shall be prohibited.

Article 31No trademark application shall infringe upon another party's existing prior rights. Nor shall an applicant rush to register in an unfair manner a mark that is already in use by another party and enjoys substantial influence.