In an earlier post, entitled, “Do You Feel Lucky? Do You?” I wrote about how Ferrari had just lost a ten year battle to prove its horse constituted a famous mark such that it did not need to register it in China to achieve trademark protection there. I made clear that the best way to avoid such fights is simply to register:
Our advice to all our clients is to register their trademarks in China before they go there. China is a first to register country and this means that whoever registers the trademark first gets it. Yes, there is an exception for famous trademarks, but unless you are Coca-Cola, it is lunacy to bank on a Chinese court holding your trademark is famous when just going ahead and registering it costs so little. Most firms charge less than $5,000 for this. So even if the Chinese Court rules your trademark is famous, you will almost certainly have spent well over $5,000 in making your case.
Microsoft has just learned the same lesson. The China Business Law Blog has an interesting post, entitled, “Microsoft Falls One Step Behind in Protecting ‘Windows’” on how Microsoft is fighting for trademark protection of its “Windows” name in China, based on its claim to that name being famous. Now before anyone jumps up and down and starts talking about how of course “Windows” is famous, I urge you to sit down and take note of the fact that Microsoft is trying to stop an eye glass company from using the name for its eyewear. It seems that a Ningbo eye glass company tried to register the trade name “Windows” under Class Nine for eye glasses and Microsoft objected. China’s Trademark Office (CTMO) apparently found that “Windows” is not famous for eye glasses and has allowed the eye glass company to use that tradename.
China Business Law Blog sees Microsoft as having made one of two mistakes:
Without further facts or the CTMO written decision, I can only assume what went wrong on the part of Microsoft. Two possible scenarios exist here that might have led to Microsoft’s misstep in protecting “Windows” in China. First, Microsoft simply forgot to register “Windows” in China, which is unlikely given its level of legal sophistication. Second, it registered “Windows” in China but did not cover Class Nine, limiting its rights to the classes of goods or services registered for.
China Business Law Blog goes on to talk about how Microsoft may still be able to prevail here:
All is not lost though. Assuming that Microsoft registered “Windows” for certain classes of goods (say, software), it could ask either the CTMO or a People’s court to give “Windows” the famous mark status, thereby availing itself of broader protection. It is unlikely that Microsoft’s counsel has not tried that at the CTMO, but it can still try at an intermediate court in Zhejiang province where Ningbo is located. The court might find “Windows” legally famous for software (and whatever Microsoft registered it for in China), and might rule that the registration or use of “Windows” by another applicant for eye glasses is likely to dilute “Windows”, the famous mark for software.
I completely agree with the China Business Law Blog both on what has probably taken place here and on what Microsoft may have left to do to salvage its situation. I will go a step further though and say that under Chinese law, Microsoft is not likely to prevail unless the court decides to rule in its favor for international political reasons. If we were dealing with a name like Coca Cola, I would be betting on Coke to prevail because anyone using that name for any product (not just beverages) is clearly seeking to trade off Coke’s famous name. In the case of “Windows” however, the Ningbo glass company can claim that Microsoft failed to register that name in Class Nine, that the word windows can be applied to eyeglasses such that using it is not necessarily an attempt to take advantage of the Microsoft Windows name, and that Microsoft had every opportunity to spend the few thousand dollars it would have taken to register “Windows” in Class Nine.
I’m guessing Microsoft is not feeling all that lucky today.
Full Disclosure: Though I live in Seattle and Microsoft is in a suburb about 25 miles away, my house is surrounded on all four sides by Microsoft employees.