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.