Donald Trump has had a successful 2016. Despite a campaign plagued by controversies and negative publicity, he won the US Presidential Election. He also recently settled several lawsuits including a class-action suit against him by former Trump University students who alleged that Trump University committed fraud and misled its students and participants.
However, perhaps the icing on the cake was a decision from China which favours the reality show celebrity turned President-elect of the United States. He has won the right to use his name as a trade mark in relation to property services in China after a 10-year dispute.
10-Year Trade Mark Battle
The dispute begun in 2006 when Mr Trump instructed his lawyer to apply for his name as a trade mark in China. In 2009, China’s State Administration for Industry and Commerce’s (SAIC) trade marks office refused to grant Mr Trump trade mark rights on the basis that his trade mark was considered too similar to a trade mark application filed just a few weeks earlier by Dong Wei. Dong Wei applied for the TRUMP name in relation to construction and factory building services.
In 2014, Trump representatives appealed the decision. Trump challenged SAIC’s decision by going to Beijing First Intermediate People’s Court. Following another unfavourable decision, he appealed by going to Beijing Higher People’s Court who agreed to hear the case in early 2015. The higher court ultimately ruled in favour of Trump and invalidated Wei’s application. Although the ruling was made in 2015, it was recently made available to the public.
Beijing High People’s Court allowed Donald Trump to use his name as a trade mark in relation to commercial and residential properties.
China’s First to File System
In China, 53 registered trade marks incorporate Donald Trump’s name. However, Trump owns only 21 of these registrations. More than half are owned by other entities in relation to various goods and services. This is because trade marks rights are administered according to a first-to-file system in China. This means that the first person to file and obtain the trade mark registration in China would own the exclusive right to use the trade mark.
This is different to jurisdictions like the USA, Australia, and other common law countries where trade mark owners can obtain trade mark registration even if there is similar trade mark already on the Register provided that they prove prior use. China’s trade mark office does not accept evidence of prior use for the purpose of obtaining registration if a similar trade mark exists with an earlier filing date.
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Trade Mark Squatting
China’s first-to-file system has given rise to a practice called trade mark squatting. This is when people, usually domestic entities, apply to register well-known brands in China before its legitimate owners from overseas. Consequently, when legitimate owners, usually from other jurisdictions, apply for their trade mark, their application gets blocked due to its similarity with the trade mark filed by the squatter.
Foreign entities who would like to enter the Chinese market are then left with unattractive choices which include paying the domestic squatter large sums of money to buy the trade mark. Apple has reportedly paid $60 million to buy the iPad trade mark in China. Other companies decide to rebrand which can be expensive. For example, Castel Freres, a French winemaker, opted to rebrand despite an ongoing dispute with a trade mark squatter. Some brands choose to litigate their matter. Unfortunately, aside from Trump, it’s difficult to think of another foreign entity who has been awarded a favourable decision against a dispute with a trade mark squatter.
Other celebrities also have had encounters with trade mark squatters including Canadian pop singer Justin Bieber whose trade mark is owned by a man in Guangzhou. Chinese sportswear company, Qiaodan Sports Co Ltd registered and continues to use basketball legend, Michael Jordan’s name. The Chinese company who won a suit initiated by the disappointed basketball legend last year. Michael Jordan appealed early this year, but Jordan’s representatives and commentators are not holding their breath for a positive outcome.
Key Takeaways
Details are scant as to how and why Donald Trump obtained his trade mark win to use his name regardless of its similarity with another trade mark filed. However, this situation should remind business owners that different jurisdictions have different trade mark laws and registers. What is available in Australia may not be available in other countries. If you have any questions about protecting your brand overseas or need assistance devising an IP strategy for your business, get in touch with our IP lawyers on 1300 544 755.
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