Trademarks and ownership of phonetic translations?

[rolf]

Anyone know what the implications are of going after localised versions of trademarks, celebrity names etc.?

For instance, if I tried to get yasserarafat.com, I might be pursued by his estate.

However, if I went after 阿拉法特.com (which I think is a phonetic 4-syllable approximated translation), would there be any legal case?

Many western names are approximated in China and Korea and probably Japan also.

e.g. the local Chinese translation of Sylvester Stallone has been something that sounded like "Seet-a-lo". Whatever the characters are, could I make an IDN version of this and be pursued by Rambo himself?

Perhaps this needs a test case?

[Olney]

This is going to be a real big issue because as far as Japan western names said in Japanese can conflict with local Japanese names.
We own one that we realize we might either be bought out or hit with a letter. I don't think there is a rademark for it in the US.

We have a US company so there's not a US trademark with this name but there might be in Japan but there's a US company who just released a product in English that would use the Japanese pronunciation we own.

The tricky thing is most US companies aren't really concerned about their Asian compatible pronounciations. It's not the exact trademark.
It's like Mickey Dees for McDonalds can they sue for this?

Time will tell but we own a really big simple Japanese term which is also used by one of a really, big, big billion dollar company. Actually their flagship product, but our term is not their trademark. it's the pronounciation of it in Japanese.

[Rubber Duck]

Trademarks are a complicated and much misunderstood area.

A trademark does not forcibly have to be registered, but it unlikely that you would be effectively pursued by someone who does has not registered their trademark.

Trademarks are language specific as you either register a section of text or device /" graphic". They are also country specific as they have to registered in each country.

Trademarks are specific to one business area. If the same mark is used in another area where it has not been registered then there is no infringement, i.e. Smith's Computers is not in conflict with Smith Travel.

As you will appreciate maintaining a global Trademark is an expensive business.

Sound alike phases mean nothing with regard to Trademarks, as it is only the visual representation that is covered. There can, however, be Copyright issues, which is a separate matter.

Best Regards
Dave Wrixon

[rolf]

Its been a while since I raised this issue and the IDN market continues to move on.

Anyone know where I can check overseas (specifically Chinese) trademarks.

Are the databases wired up to the web yet?

[alpha]

do the Chinese respect trademarks? I don't mean it to sound derogatory, but you hear so much about software piracy, and dodgy counterfeit goods - I can't imagine China taking TM's seriously... but maybe i've just been brain-washed by propoganda.

[mulligan]

The system of trademark law in mainland China (http://en.wikipedia.org/wiki/Mainland_China) is administered by the Trade Mark Office (with an appeal function adminstered by the Trademark (http://en.wikipedia.org/wiki/Trademark) Review and Adjudication Board and the courts). The two principle pieces of legislation forming the trademark system are the Trademark Law, and the Unfair Competition Law.
Only registered trade and service marks (http://en.wikipedia.org/wiki/Service_mark) are protected in the PRC: there is no common law (http://en.wikipedia.org/wiki/Common_law) protection for unregistered trademarks (except for "well-known" marks, as detailed below).
Amendments to the PRC's Trademark Law on October 27 (http://en.wikipedia.org/wiki/October_27), 2001 (http://en.wikipedia.org/wiki/2001) allows three-dimensional trademarks and colours to be registered as trade marks. Collective and certification trademarks can also now be registered in China. "Well-known" trademarks are also now recognised under Chinese law (the courts and administrative bodies will take into account the level of knowledge of the trademark by relevant consumers, the length of use of the trademark, the amount of publicity given to the mark in China, and the history of the mark).
Trademark piracy is a rampant problem for trademark owners in China, despite the highly effective and speedy administrative raid procedure available to trademark owners under the auspices of the State Administration for Industries and Commerce.
http://en.wikipedia.org/wiki/People's_Republic_of_China's_trademark_law



Hong Kong trademark law


The trade mark (http://en.wikipedia.org/wiki/Trademark) law of Hong Kong (http://en.wikipedia.org/wiki/Hong_Kong) is based on the Trade Marks Ordinance Cap. 559, which came into force on April 4 (http://en.wikipedia.org/wiki/April_4), 2003 (http://en.wikipedia.org/wiki/2003) and repealed the Trade Mark Ordinance Cap 43. The system established by this legislation is entirely separate to the system used in the People's Republic of China (http://en.wikipedia.org/wiki/People%27s_Republic_of_China), pursuant to the "one country-two systems (http://en.wikipedia.org/wiki/One_country_two_systems)" policy. The superseded law and the current law share many similarities with the relevant legislation in the United Kingdom (http://en.wikipedia.org/wiki/United_Kingdom), a similarity which is also facilitated by TRIPs (http://en.wikipedia.org/wiki/TRIPs).
The new law introduced various substantive and procedural changes, such as expanding the legal definition of a trademark; including or broadening protection for certification marks (http://en.wikipedia.org/wiki/Certification_mark), collective marks (http://en.wikipedia.org/wiki/Collective_mark), and well-known trade marks (http://en.wikipedia.org/w/index.php?title=Well-known_trade_mark&action=edit); reducing the period of non-use for revocation purpose from five to three years; and simplifying and streamlining procedures for the registration of assignments, and "registrable transactions"

Filing to registration

Registration of a trade mark in Hong Kong commences with the filing of an application at the Trade Mark Registry of the Hong Kong Intellectual Property Department. An application may cover one or more classes of products and/or services. The standard total cost for using the services of a trademark attorney (http://en.wikipedia.org/wiki/Trademark_attorney) to handle the filing of an application in one class is HK $4,300 (the professional component of this fee is recommended by the Hong Kong Law Society). There will be additional fees for extra classes, and for other stages in the registration process.
Firsly, the application is assessed by an examiner for deficiencies which go to formalities. The next stage is substantive examination, where the main grounds of objection could be raised: absolute grounds for refusal (eg. where the mark is inherently not registerable (http://en.wikipedia.org/wiki/Trademark#Registrability_and_distinctive_character)), and relative grounds for refusal (eg. where the mark is identical or similar to mark covered by an application or registration filed earlier in time).
If any objections are overcome, the application will be accepted by the registry and published for opposition purposes for an extendible period of three months to allow third parties to object to registration of the mark on certain grounds.
Once any oppositions are resolved, a certificate of registration will be issued. The standard timeframe to registration for an application which encounters few if any problems or difficulties is 12 months.
[edit (http://en.wikipedia.org/w/index.php?title=Hong_Kong_trademark_law&action=edit&section=3)]

Post-registration

A registration for a trade mark may be subject to revocation by a third party if the trade mark has not been genuinely and continuously used for at least three years, and there are no valid reasons explaining the lack of use.

The old law

The old trade mark law (Cap. 43) divided the register (http://en.wikipedia.org/wiki/Register) of trade marks into two parts called "Part A" and "Part B", whereby the owners of distinctive (http://en.wikipedia.org/wiki/Trademark#Registrability_and_distinctive_character) marks could seek registration under Part A, while the owners of marks with some distinctive character could pursue registration under Part B. Part B registration meant that certain rights were not available to the trade mark owner, which were otherwise available to the owner of a Part A registration.
Under the new law, the division of the register was abolished, and one standard of registrability was introduced.
http://en.wikipedia.org/wiki/Hong_Kong_trademark_law

China has fairly recently signed agreements with the US to crack down on TM infringement and Piracy.

What this means in practice is another matter

TM Database:
http://www.chinatrademarkdatabase.com/

What they are doing to protect TM's:
http://sbj.saic.gov.cn/english/index_e.asp

[rolf]

I tried a TM search on that Chinese website, couldn't get it to work. Useful site though, thanks!

[Giant]

This is a very interesting question, I'm sure ICANN will discuss a great deal on this issue later.

If a Western business name like McDonald 麦当劳 was registered as a trademark in China, then I guess McDonald will ultimately own 麦当劳.com. But if it's not a registered Chinese trademark then it's hard to say because there are so many ways to translate a foreign name.

At this time, no one can say anything for sure, even a supreme court judge. We have seen many times the supreme court had split decision on trademarks.

[Rubber Duck]

I tried a TM search on that Chinese website, couldn't get it to work. Useful site though, thanks!

Moi, non plus!

This is a very interesting question, I'm sure ICANN will discuss a great deal on this issue later.

If a Western business name like McDonald 麦当劳 was registered as a trademark in China, then I guess McDonald will ultimately own 麦当劳.com. But if it's not a registered Chinese trademark then it's hard to say because there are so many ways to translate a foreign name.

At this time, no one can say anything for sure, even a supreme court judge. We have seen many times the supreme court had split decision on trademarks.

Actually, I think it is pretty clear cut. If there is domain registered in China in Chinese characters then any infringement of the that Trademark makes you vulnerable to WIPO. Any Trademark not registered in Chinese Characters has no bearing on the registration of a domain in Chinese Characters. Proof of usage in a country like the United states does make you vulnerable to WIPO without a registration, but the usage would need to be in the same script as the domain. Simply saying that it means the same thing or sounds a bit like it doesn't mean anything in Trademark Law. Furthermore, registering a Trademark subsequent to the registration of a domain cannot support any argument that domain was registered in bad faith. The Trademark has to be proven to be effective at the time of registration.

Of course, how some idiot judge will misinterpret a very straightforward situation is anyones guess.