The first thing I ask any company that wants to do anything in China is: “Did you register your trademark?” Usually, they did not. I either help them registering it (costs around $1,000). If they refuse, I won’t work with them. It would be a waste of time. All too often someone else in China sees a value in that trademark. Being a “first to file” country, anybody can file any trademark in China that isn’t already filed – in China. Getting your trademark back is a long, expensive, and often hopeless case.
Ignorance takes another victim: Land Rover.
According to Xinhua, Land Rover used two Chinese characters “Lu Hu” in China for its “Land Rover” brand since early 1990s. Apparently, Land Rover forgot to register “Lu Hu” as a trademark. In 1999, Geely registered the “Lu Hu” trademark knowing that Land Rover was using it, court papers released on Friday said.
Land Rover had filed an appeal with the Chinese Trademark Appeal Board. The board rejected the appeal. First come, first serve.
Any good trademark lawyer in China would tell Land Rover that “knowing it” does not matter in China. If the mark is not filed, it is fair game. If Geely would have successfully registered “Land Rover”, JLR would have a fighting chance to eventually get the mark back, based on the “famous mark” doctrine.
But “Lu Hu”? Unless “Lu Hu” is well known both inside and outside of China, and unless “Lu Hu” had been registered outside of China, it’s no well-known mark according to Chinese rules, and the Appeals Board was right to tell JLR to pound salt. Them’s the rules.
Now, Land Rover took an unusual step: They sued. They did not sue Geely. Land Rover sued the “Trademark Appeal Board, an agency under the State Administration for Industry and Commerce,” says Xhinhua. The suit has been accepted by the Beijing Municipal No. 1 Intermediate People’s Court.
Well, the court has to. That’s the law also. First of all, the board is not the Trademark Appeal Board. It is the “China Trademark Review and Adjudication Board.” According to the seminal text on the matter, “where an applicant disagrees with the decision rendered by the China Trademark Review and Adjudication Board (“TRAB”), which is the appellate body of the Chinese trademark administrative agencies, she can initiate an action20 against the TRAB in a court with competent jurisdiction pursuant to the Chinese Administrative Procedure Law.”
Land Rover asks judges to order the board to review its earlier decision. A trial date has yet to be decided. The court will ask a number of uncomfortable questions, and I don’t know whether Land Rover has all the answers.
Shall we start an office pool? My 100 RMB are on the Appeals Review and Adjudication Board.
Sounds like Land Rover failed to (payoff the right people) hire the proper consultants.
China really doesn`t do itself any favors. It wants to move away from “Made in China” to “designed in China”. That isn`t going to happen when it pulls this crap. Yes it may technically be legal, just as it is legal for Kim Il Jong to rule North Korea. Doesn`t make it right.
Mike: When I came to America 30 years ago, I had to observe American law. German law did not count. When I came to China seven years ago, I had to observe Chinese law. American or German law don’t count there. If you want to work in a foreign country, you need to learn and observe the law of the land. Arrogance gets you nowhere, except into trouble,
China is not the only “first to file” country. Many countries in Asia are. Brazil is. According to the International Trademark Association, “a majority of countries have first-to-file vs. first-to-use trademark priority systems.”
Are they the countries that innovate? mike978 has a point, provided China really cares about ever creating any intellectual property rather than just hijacking it.
Ignorance of the rule is not a defense. LR screwed up, plain and simple and they’ll lose. The anti-Chinese rhetoric will get you exactly nowhere.
Since a Chinese firm owns the trademark for MG and Rover, I expected JLR to be especially careful with Land Rover’s prospects in China. Is there a Chinese/Indian cultural dimension involved here, or just corporate lack of due diligence?
SAIC doesn’t own the Rover trademark. They own MG Rover’s plant after SAIC took over Nanjing Auto. However, Nanjing Auto had fallen into the same trap Volkswagen had found itself in after they had bought Rolls Royce: They bought a plant without the trademark.
Saic’s “Rover” cars are called “Roewe” – which sounds just like “Rover” in Chinese. Due diligence indeed is highly important during these transactions. A lot of so-called IPR infringements are the product of ignorance or arrogance.
Yet, JLR should know better. They profited from the Rover scandal. The Rover brand went to BMW, BMW had no use for it and sold it to JLR. What goes around, comes around.
If I’m not mistaken, I think it was Ford, back when it still owned JLR, bought back the rights of Rover.
Lu (路) = Road
Hu (虎) = Tiger
“Lu Hu (路虎)” by itself is not a internationally well known brand. I bet most on this board never heard of it before. It’s only a loose brand name translation of “Land Rover” that … never got registered.
If Geely register something like “Land Rover”, I would say yeah that’s cheap and should not be allowed. But it’s “路虎” they have registered, there is no definitive link between it and “Land Rover” in the language, and thus there is nothing wrong with a first come first serve policy.