From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Wednesday, 5 April 2017

“Curry favour with Donald Trump'” by granting trade mark rights… seriously?

This Kat has come across several news reports recently on “China is trying to curry favour with the new American president by granting him preliminary approvals to his 38 trade mark registrations” (e.g. here and here), which unfortunately contain some unnecessary negative assumptions upon the Chinese trade mark system. To clear the air, this Kat would like to briefly share some fact-based disagreements.

* They said: “A Hong Kong IP consultant said he had never seen so many (38) applications approved so expeditiously”.

1. “Preliminary approval” ≠ “®”. 

Objections against any of the 38 applications may still be filed by any third parties within the 3-month objection period – bottom line, the applications in question are not ® yet. 

2. “Expeditiously”?

The 38 applications were filed in two batches respectively on April 13 and 15, 2016 (see the chart below) by two applicants (sharing the same address though). 


The publication dates of the provisional approvals were Feb. 27 and Mar. 6, 2017 – approximately 9 months after the filing dates. According to the PRC Trade Mark Law (Art. 28), a 9-month examination period is just normal:

The trade mark office shall complete the examination of a trade mark under registration application within 9 months from the date of receiving the application documents for trade mark registration, and shall issue a preliminary review announcement if the said application is in compliance with the relevant provisions of this Law.

If an applicant files several applications at the same time, he/she probably will get the approvals (of the eligible ones of course) around the same time – it is not difficult to understand, it makes sense in terms of the examiners’ work efficiency and consistency – there must be certain measures in place to avoid contradictory statements on the same issues. The quoted personal “feelings” provided by a private practitioner might be very honest and sincere, but may not be sufficiently representative and accurate to justify the conclusion reached. 

* Ben Cardin, the top Democrat on the Senate Foreign Relations Committee is quoted as saying: “This is an astonishing development. For a decade prior to his election as president, Donald Trump sought, with no success, to have lucrative and valuable trademarks granted in the world's biggest market. He was turned down each and every time. The floodgates now appear to be open.”

Sounds like Donald Trump has repeatedly suffered inequitable treatment in the past decade. Hold the sympathy please, if there is any – according to the public records, there were actually only two relevant trade mark conflicts brought to court:

(1) 2014 - 2015, Donald Trump vs. Trade Mark Review and Adjudication Board of the State Administration of Industry & Commerce (TRAB): Donald Trump failed, fairly. 

To make a long story short, as demonstrated in the chart below, Donald Trump’s application “TRUMP” is literally highly similar to the cited mark “Trump” which was filed by a Chinese individual two weeks earlier. Plus, their claimed services overlapped greatly. Under the Chinese “first to file” registration system, it is not mysterious at all that the later application ended up with rejection. 


During the appeal, the Donald Trump team argued that their mark was “extremely distinctive and well-known” (and therefore should get extra protection over the cited prior mark), which unfortunately was not the case: back in 2006 (even till early 2015), Donald Trump was definitely not as famous as he believed he was in China, probably neither in the Chinese “relevant publics”.

Most Chinese still had not heard his name immediately after the formally launch of his presidential campaign in June 2015 (which was after the closure of his appeal case), but only became aware of him after his “unorthodox behaviors” appeared during the Republican Party’s nomination debates on TV. Videos of his “highlight speeches” kept popping up on the Chinese equivalents of YouTube and received not just wide, but China-wide attention – finally he became a web-celebrity in China. 

To expand the discussion a bit further, even if Chinese people would have known the existence of this person, it would be farfetched to say that “Trump” the mark in question had created sufficient strong and stable mental association with Donald Trump the American businessman. 

A very substantial fact (though it sounds like unnecessary reminder) needs to be kept in mind: China is a country where the official language is Chinese. Chinese people are accustomed to “decode” foreigners’ names into shorter forms, and then “recode” it into equivalent Chinese forms. For instance, when talking about Michael Jordan the basketball legend, instead of mentioning his English full name, Chinese people would use 乔丹 to signify him. In similar ways, 奥巴马 is used for Barack Hussein Obama, 希拉里for Hillary Diane Rodham Clinton and 比尔盖茨 for William Henry "Bill" Gates III. Why? Because those Chinese equivalences are much shorter than the full names, which apparently facilitates communication; and meanwhile they are much more fixed and accurate – once the conventional Chinese equivalences have been formed, they will highly unlikely be changed.

In 2006, the “TRUMP” word mark was merely an ordinary English family name that had not been “decoded” yet – It can either be divided into two or three Chinese syllables and different combinations of characters (e.g. 特朗普, 川普, 床破…). The “conventional Chinese equivalences” were not “recoded”, hence to Chinese people “TRUMP” was simply unspecific within their linguistic context (see a side-reading regarding foreigners’ name right protection in China here). 

However, after he became the president of the United States, the distinctiveness of his own name-related marks would undoubtedly have had a massive upgrade, which probably will change the outcomes of similar trade mark conflicts in the future. Even then, the protections granted to his marks would rely on the increased distinctiveness caused by his presidency, not the presidency per se. 

In addition, before Donald Trump takes for granted that his name deserves automatic protection in China, he might need to make a decision on which Chinese equivalence, i.e. specific combination of Chinese characters, is preferred. Unlike Michael Jordan who has been called “乔丹” in China for several decades (and therefore can enjoy his name right in China), Donald Trump, as a “newbie”, hasn’t finalized his unified/official Chinese translation yet, in this Kat’s opinion.

(2) 2014, Donald Trump vs. TRAB and Well-East (a company in Xiamen, China): Donald Trump failed, again fairly in this Kat’s view.

The story is quite similar: An American who was overconfident of his popularity in China, fought against a Chinese company for using a Chinese character combination that was in fact different from any of his previous Chinese translations. Plus, the lines of businesses have no conflicts – hence this failure is not surprising neither. 


In fact, as the table below shows, more than half of Donald Trump’s trade mark applications had been approved to registration long before he became “overnight-famous in China”. Had China presciently implemented the whole “seamless plot to bootlick the new president” since 2006? As theories go, it’s not very convincing to this Kat. 

Ending 

This Kat believes that those voices that rashly link the aforementioned trade mark battles with politically favour-currying are rather lazy or lame. Saying “granting registration is bootlicking, whilst giving rejection is a ‘miscarriage of justice’” is slightly childish, isn’t it? As analyzed, all the aforementioned trade mark conflicts have been handled on sufficient factual and legal basis.

Besides, the legal status of the marks in question can all be followed and tracked via the Chinese Trade Mark Office online database and its Gazette (though this Kat also often complains about the website’s instability…). Nevertheless, transparency is power indeed, based on which some real dialogues can be entered into to enhance mutual understanding and further development – it is much better than building an “impenetrable, tall, powerful, beautiful wall”, isn’t it?


False alarm, purr... 🎵🐟
Photo courtesy of Laoshu-huahua.

3 comments:

Anonymous said...

One issue overlooked in this article. If Trump relies on reputation directly resulting from his Presidency to obtain registration of privately held commercial trade marks or even attempts to do so he is very clearly (ab)using the Presidency for private gain. At best this is unethical.

Anonymous said...

An ordinary English word indeed, which was either an expression used in card games, or (in my part of London anyway) a slang word for flatulence.

Anonymous said...

Sad

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