In a recent case between Polish Komandor S.A.
(hereinafter "the Plaintiff") vs. Coamdo Furniture (Shanghai) Co.
Ltd. (
,hereinafter
"the Defendant"), the Beijing Higher People's Court ruled that the
defendant committed trademark infringement and unfair competition.
The ruling marked an end to a lawsuit that has lasted for over five
years, in that the plaintiff charged the defendant's use of "
"
- The version consists of three Chinese characters, reads Kemanduo
in Chinese sound and is the plaintiff's Komandor in Chinese transliteration
- was an act of trademark infringement and unfair competition. The
court's decision also drew a line signifying how a foreign trademark
is protected in terms of its Chinese version in China.
The Plaintiff, Komandor S.A. (
)
is a Polish multinational company with headquarters in Poland that
is engaged in furniture manufacture. Its furniture products are sold
to tens of countries, and it has established branch offices in the
United States and Canada, etc.. Its trademark "Komandor & Maple Leave
Design & Globe Design" has been approved for protection through territorial
extension under the Madrid System to many countries, including China
in respect of the goods in classes 6, 9, 19 and 42.
In 2002, the Plaintiff entered Chinese market via a Cantonese distributor
that found the Plaintiff's Komandor-branded furnitures were well welcomed
by Chinese consumers. Then, the distributor applied for registration
of the same trademark for "stave wood, etc." in class 19 and obtained
the registration of the mark. Afterwards, one of the share holders
of the distributor registered a company "
"
(Coamdo Furniture (Hong Kong) Limited) in Hong Kong and subsequently,
registered
(Coamdo Furniture (Shanghai) Co. Ltd.) in Shanghai in the name of
Coamdo Furniture (Hong Kong) Limited.
From
the very beginning of registration of Coamdo Furniture (Shanghai)
Co. Ltd., the Defendant started to operate its business in the name
of the exclusive distributor of the foreign brands ""
and "KOMANDOR", and use "KOMANDOR" and ""
as its trade name in its Chinese enterprise name.
On July 7, 2007, the plaintiff lodged a lawsuit before the Beijing
Second Intermediate People's Court, requesting the court to order
Coamdo Furniture (Shanghai) Co. Ltd. to stop infringing their trademarks
and using their trade name.
The issues in the suit are whether the Chinese version ""
used by the defendant is the Chinese transliteration of the plaintiff's
"KOMANDOR", and whether the defendant's use of ""
and "KOMANDOR" as trade name constitutes an act of unfair competition.
In December of 2007, the court made a judgment partially favorable
to the plaintiff that the defendant's use of the English trade name
"KOMANDOR" constituted an act of unfair competition. However, the
Defendant may continue to use ""
as its trade name since the Defendant's use of the name in China predated
the Plaintiff's use in China. The court also rejected the charge for
trademark infringement on the ground that although the Defendant used
trademarks that were almost identical to Plaintiff's, the goods were
not similar.
However, the matter did not end there; it was appealed before the
Beijing Higher People's Court for the trial of second instance. In
June of 2008, the Higher Court held that ""
is a customary Chinese transliteration of "KOMANDOR". The goods as
advertised on the Defendant's website and in promotional catalogues
are identical to Plaintiff's. Therefore, the use of ""
is likely to cause confusion and mislead the consumers as to the sources
of goods. The Higher Court further held that the Defendant's use of
the Plaintiff's trademark and trade name constituted trademark infringement
and unfair competition. The Higher Court ordered that the defendant
stop using the trademark and the company names of both KOMANDOR in
Chinese characters and "KOMANDOR" in English, and pay damages for
economic losses in the amount of RMB 100,000 yuan and legal costs
of RMB 4,035 yuan.
In recent years, with integration of global economics, disputes between
foreign trademarks and its Chinese equivalents have increased in number
and complexity. The Higher Court's ruling constitutes a precedent
for resolution by judicial proceeding of a typical conflict over trademarks
and enterprise names, in that the Court directly ordered that the
infringer to stop using the infringing trade name in their enterprise
name. This is a break from the administrative dispute resolution methodology
of the Administration for Industry and Commerce (AIC), which is in
charge of enterprise name registration.
From the linguistic perspective, foreign words and names that are
normally written in the Roman alphabet can be transliterated into
Chinese by using a variety of Chinese characters that approximate
the phonetic sound of the foreign words or names. In fact, transliteration
is a highly subjective process that depends on the predilections of
the individual who performs the transliteration. Therefore, it is
not possible to fix a Chinese transliteration solely and exclusively
corresponding to a foreign trademark. The polyphonic conversion from
foreign into Chinese language has long been a difficult issue faced
not only by both Chinese and foreign trademark owners, but also the
courts and administrative agencies as well in China. However, from
the court's ruling, apparently, we can conclude that the Chinese version
of a name that corresponds to a foreign trademark should be based
on customary transliteration together with other circumstances surrounding
the case.
