Is your famous foreign brand just another mark lost in translation?

A few recent cases have brought interest to bear on trademark portfolio strategy for foreign brands in China. Attention should be paid in the acquisition of trademarks in Chinese characters. Marketing managers may suggest emphasising the foreign origin of products by using the foreign-character trademark, but the registration of the trademark in Chinese characters is of the utmost importance, to prevent others from registering it.

Johnnie Walker or John walks?

On 23 November 2011, Beijing Intermediate People’s Court backed a decision from the Trademark Review and Adjudication Board (TRAB) that rejected the claim of Diageo Brands (Diageo) for cancellation of the trademark 约翰走路 (Yue Han Zou Lu in Chinese characters, which means “John walks”) under class 30, which covers chewing gum, cocoa products, rice pudding, oatmeal, etc.

Fujian Jinjiang Shenglong Food (Shenglong) applied for the registration of this trademark in class 30 on 29 September, 2001. Diageo claimed that Yue Han Zou Lu is similar with its trademark “Johnnie Walker”, used for its famous scotch whisky, since its meaning is almost identical. The TRAB and the court found Diageo did not prove that before 2001 Johnnie Walker was so well known that it could obtain protection against a possible translation in a different class. Diageo has owned the registered name of “Johnnie Walker” (尊尼获加 or Zun Ni Huo Jia in Chinese) since the early 1990s.

Fabio Giacopello is a partner at the Shanghai office of HFG