China Trademarks: When Similar Ain’t So Similar

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Happy Yuan Xiao Jie to everyone. I’m sitting here eating Yuan Xiao, listening to the last of the fireworks, and of course thinking about China intellectual property law. Doesn’t everyone?

Paul Midler has a great post up on a couple possible cases of China trademark infringement. He correctly calls the first as a fairly solid case:

One that I found particularly amusing was a slight twist on the “Esprit” brand. Pictured at the top here, this backpack has a logo that mimics the original but uses a brand that looks a lot more like like “Spit.” Companies worry that counterfeiters will dilute their brand, and this sort of example drive the point home quite nicely, actually.

Probably, but not a sure bet. It’s not a counterfeit mark and it starts with a different letter. Trademark examiners traditionally pay a lot more attention to the first few letters of a mark than the last part. Dictionaries also have severe limitations. That’s why I always tell my students that the following two marks, neither of which are in the dictionary, may not always be considered similar according to a trademark examiner:

Microsoft

Teenysof

Anyway, the “Esprit” one is pretty easy, and I’d be happy enough bringing that to the AIC.

Paul also calls the second case correctly, as he worries that the similarity is too attenuated:

Consider the second and third pictures now. One is of a ball carrying the logo for Wilson Sporting Goods. This other is for a Guangzhou-based sporting company called Menlow.

Wilson versus Menlow? Without looking at the pictures, you’d think that the two names are not at all alike, but consider what’s been done: The scripted “W” from Wilson has been turned upside down so that it becomes the “M” in Menlow. They’ve done something similar with the “N,” changing it into a “W.” They preserved the tall, scripted “L,” and the net effect is a logo that from a distance and without too much thought looks quite a lot like the original!

This is a clever one, and there is obviously some similarity here. But Paul is right: not enough for a trademark infringement case, I think. Two additional issues to bring up:

1. Type of registration held by Wilson. A trademark registrant has the option of filing for protection of the black and white name of something by itself (e.g. “WILSON”) or the name plus color or artwork. In this case it would be the stylized “Wilson” in cursive handwriting style as shown in the pic I lifted from Paul. If Wilson held this second type of registration, it would have a better, but probably not good enough, argument that Menlow was infringing on the “WILSON” mark.

2. Legal theory. Trademark infringement is only one legal theory in the grab bag of IP infringement. In this case, if Menlow was otherwise implying to its customers that its product was Wilson’s, then a case of unfair competition might be possible. Some examples? Using Wilson’s catalog or website text and/or images, using other distinctive packaging that copied that of Wilson, using the Wilson name when soliciting customers. You get the idea.

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