By Kiran Jassal
By now, many are aware that Facebook has taken a rather active stance when it comes to protecting its trademark. Examples include bringing infringement claims against Designbook, Lamebook, and Teachbook. Not surprisingly, Facebook is once again policing its trademark. What is surprising, however, is that Facebook won a trademark dispute in China, a place where trademark disputes haven’t typically ended in favor of U.S. companies.
On April 28, 2016, the Beijing High Court ruled that the Zhongshan Pearl River Drinks Factory (the “Factory”), based in southern Guangdong province, should not have been allowed to register the trademark, “face book”. Hoping to use the mark “face book” on its various food and beverage products, the Factory filed a trademark application at the Trademark Office of the State Administration for Industry and Commerce on January 24, 2011. The application was ultimately approved by the Trademark Review and Adjudication Board in 2014. Liu Hongqun, marketing manager of the Factory, articulated two main reasons for why it should be allowed to use the trademark in conjunction with its products. First, Hongqun claims translation of the word “face book” – “lian shu”- refers to masks used in traditional Chinese opera and “is something very Chinese.” Second, even though Facebook is a known brand around the world, it is blocked in China and has been since 2009. Therefore, the trademark does not have the same influence in China that it enjoys in other parts of the world.
Under Chinese law, a globally recognized brand must prove that its trademark is also well-known within China. Facebook argued that although the social networking site is blocked in China, it remains well-known. Internet users in China can access the site with the help of virtual private networks, or VPNs, which are technically illegal but allow users to circumvent the country’s “Great Firewall.” Some commentators suggest that this ruling may be a sign that Beijing attitudes are softening towards Facebook. Although the world’s largest social network remains blocked to Internet users in China, Facebook founder and CEO Mark Zuckerberg has been making efforts to build a relationship with Chinese officials. In addition to attempting to master Mandarin, he has jogged through Tiananmen Square despite intense smog, attended the China Development Forum in Beijing, and discussed the future of Internet development with Liu Yunshan, a senior Communist Party of China leader.
In a verdict posted on its verified Weibo account, the Beijing Court said that the trademark authority’s approval of “face book” had been revoked, and that it is now up to the regulator to revisit the decision. In the ruling, the Court said that the company had “violated moral principles” with “obvious intention to duplicate and copy from another high-profile trademark.” In essence, the Chinese company has been told it can no longer use the words “face book” in its branding.
Other U.S. companies have not had as much luck when it comes to trademark protection in China. For example, in late March, another Chinese court ruled that small manufacturer, Xintong Tiandi, could keep using the “iPhone” name on a variety of leather mobile accessories that it makes, such as phone cases and wallets. Despite Apple registering its mark five years before Xintong Tiandi, Apple couldn’t prove the brand was well-known before Xintong registered the trademark, nor could it demonstrate damage to its name. Another instance of potential trademark infringement involves a Chinese athletic clothing company called Uncle Martian, which denies its eerily similar logo is based on the Under Armour brand.
China’s trademark regulator may still revisit this recent Facebook decision, but if this ruling remains, it may be good news for other U.S. companies policing their trademarks in China.
Image Source: The Drum