[caption id="attachment_5363" align="alignleft" width="150"] Vacuum Cleaner Patent Drawing[/caption] By Tikwiza Nkowane|www.amdlawgroup.com When you come across something you are interested in what do you do? For me, I research the topic...
Chrisdien Deny, sounds familiar? It’s actually a retail chain with more than 500 locations across China, sells belts, shoes and clothing with an “Italian style” — and if you try to pronounce it and see how the logo looks, it’s not hard to find a substantial similarity to Christian Dior’s. You are guessing maybe it is the twin brother or sister of Christian Dior? No! It is actually a subsidiary of Huayu Group Holdings Ltd., based in Guangzhou, China.
Play on Confusion?
Creating of western sounding name for a local Chinese brand can be a smart marketing approach, if the name is honestly and originally created to convey the similar English meaning (or even just Pinyin letters) and to reach out foreign markets. However, if the “creation” is no more than a pure imitation of an existing, well-known foreign brand, in fact, that constitutes an unacceptable action of free-riding, which infringes the goodwill of the foreign brand in a deceptive and cheap way.
How so? Confusion! Imitators play on confusion, on the appearance and sound. Trademark law protects a trademark owner’s exclusive right to use a trademark when use of the mark by another would be likely to cause consumer confusion as to the source or origin of goods. A test for a positive likelihood of confusion is based on various factors. The first factor requires examination of “the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.” The test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison, but whether the marks are sufficiently similar that there is a likelihood of confusion as to the source of the goods or services.
People may argue that, an imitator brand cannot directly compete with the real brand for sales. However, the competition in fact results in more severe consequences for the foreign brands that are on their way to build global recognition, but not already well-known ones. Because the more commonly the imitator brand “borrow” the certain appearance or sounding from a foreign brand, the most dilution it causes to weaken the strength of the mark, and the more confusion it causes in different marketing channels. That said, small and medium players especially need strong and consistent brand image to help build the business goodwill.
As for big players, luxurious fashion houses, it turns out that it not only attracts imitators of its foreign sounding, but also the ones that mimic the Chinese translation name of the brand. French luxury group, Hermès, which has a Chinese translation name of “Ai Ma Shi” as its commonly recognized Chinese version of the brand, lost a big battle with its imitator.
Hermès, which is known as “爱马仕,” or “Ai Ma Shi,” in China, registered its French name as a trademark in 1977, but failed to register the Chinese version as well. In 1995, a Chinese clothing company applied to register the trademark “爱玛仕,” which uses slightly different characters but shares the same Chinese pinyin spelling of “Ai Ma Shi.”Hermès appealed to China’s Trademark Appeal Board (CTAB), arguing the imitator brand was confusingly similar to its Chinese name. However, the CTAB rejected Hermès’ appeal and surprisingly approved the imitation’s registration. Hermès kept fighting for its unregistered Chinese name after 8 year, and this time, it urged the CTVB to recognize the imitator’s action to obtain the similar sounding registration through a “deceptive” mean. However, the CTAB was not convinced by the Hermès’ argument and evidences, affirmed the decision ruling the Hermès failed to demonstrate that its Chinese name was well-known among Chinese consumers.
Lesson learned. The evidence of fame is so hard to demonstrate and to convince the court in order to save an unregistered Chinese name of a well-known foreign brand. It seems that brands and trademark holders need to be really careful in registering the original foreign names and slogans, and also the Chinese translation names thereof.
Part of branding is a game of words, a game from visual to memory. A stable and consistent brand identity is just as important as the quality of the products, which both have long-term value. To better respect and build that value, Chinese companies should focus on local value development and original business strategies. Playing on confusion and borrowing are cheap tricks, which cannot get the business far. Foreign brands not only have to do a better job on brand policing, but also need to start thinking about prevention of the potential adoption of its variations! Maybe self-parody is a good way to do it!
Key words: brand policing; China; brand imitation; trademark registration; brand’s Chinese translation; likelihood of confusion; Sindy Ding-Voorhees; AMD LAW
1. Interpace Corp. v. Lapp, Inc., 721 F.2d 460 (3d Cir. 1983)
2. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973)
3. Dan Levin, Adidos and Hotwind? In China, Brands Adopt Names to Project Foreign Flair, Dec 26, 2014, http://www.nytimes.com/2014/12/27/business/international/adidos-and-hotwind-in-china-brands-evoke-foreign-names-even-if-theyre-gibberish.html?ref=business&_r=3
4. Trademark Manual of Examining Procedure (“the TMEP”) §1207.01
5. Lanham Act, 15 U.S.C. §1114, 1125(a)
6. Sarah L. Bruno, Anthony V. Lupo and Authony D. Peluso, Arent Fox LLP. Trademark issues heating up in China as luxury fashion brand Hermès loses appeal to cancel imitator’s registration of its Chinese name,http://www.lexology.com/library/detail.aspx?g=478a8732-c0ed-4d93-be91-d4c2f52871d6
Image credit: Gilles Sabrie for The New York Times