Dell Computer just lost a trademark infringement lawsuit in China. I certainly hope that case is never cited as an example of China not enforcing intellectual property rights (IPR) because it is not (h/t to Asia Business Intelligence and to the IP Dragon).  The case was decided in Beijing and we are looking to see if we can acquire a copy of the decision.

Dell lost and, from what I have been able to garner about the case, deservedly so.  Dell claimed that a mark pronounced “De er” being infringed on a Dell mark, pronounced “Dai er.”  The two marks neither use the same characters nor are they pronounced the same.  On top of this, the Chinese company registered its mark in 1997.  Dell sought to counter all of this by arguing it was so famous, it had to be an infringement.  The court rejected this argument.

Bottom Line:  If you want your trademarks (or words that sound like your trademarks) protected in China, the rules could not be more simple: register them.  If your name is Dell and you want both “De er” and “Dai er” protected, register both of them.  Doing so is exponentially cheaper and more reliable than pursuing a trademark infringement lawsuit.

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Dan Harris

I am a founder of Harris Bricken, an international law firm with lawyers in Los Angeles, Portland, San Francisco, Seattle, China and Spain.

I mostly represent companies doing business in emerging market countries. It has taken me many years to build my network and it takes constant communication and travel to maintain it. My work has been as varied as securing the release of two improperly held helicopters in Papua New Guinea, setting up a legal framework to move slag from Canada to Poland’s interior, overseeing hundreds of litigation and arbitration matters in Korea, helping someone avoid terrorism charges in Japan, and seizing fish product in China to collect on a debt.

I was named as one of only three Washington State Amazing Lawyers in International Law, I am AV rated by Martindale-Hubbell Law Directory (its highest rating), I am rated 10.0 by AVVO.com (its highest rating), and I am a SuperLawyer.

I am a frequent writer and public speaker on doing business in Asia and I constantly travel between the United States and Asia. I most commonly speak on China law issues and I am the lead writer of the award winning China Law Blog (www.chinalawblog.com). Forbes Magazine, Fortune Magazine, the Wall Street Journal, Investors Business Daily, Business Week, The National Law Journal, The Washington Post, The ABA Journal, The Economist, Newsweek, NPR, The New York Times and Inside Counsel have all interviewed me regarding various aspects of my international law practice.

I am licensed in Washington, Illinois, and Alaska.

In tandem with the international law team at my firm, I focus on setting up/registering companies overseas (via WFOEs, Rep Offices or Joint Ventures), drafting international contracts (NDAs, OEM Agreements, licensing, distribution, etc.), protecting IP (trademarks, trade secrets, copyrights and patents), and overseeing M&A transactions.

  • Register them, and every possible permutation of them and their spelling and the combinations of characters, as well as fonts, styles and colours and anything else, as soon as you get here. Ok, I’m no expert on this, far from it, but one thing we’ve all noticed is just how good many Chinese companies are at eploiting every aspect of the law, language, business, whatever, to get their way. Not that I’m blaming them. I’m just saying it’s only common sense to protect every aspect of your business in every possible way right from the word go, regardless of how famous you think you are. But common sense isn’t as common as its name suggests.
    So, no sympathy for Dell.

  • Problem for Dell was that this other company has had the name since 1997. Not sure why Dell waited so long to do anything about it, but that probably did not matter. Your advice is good, but expensive. It makes sense for the Starbucks and the Dells and the Nikes of the world, but it is a lot tougher for the moms and pops out there and they have to be more selective in terms of their registrations.

  • Has anybody seen or heard of a case that gives guidlance on when you can use Dell in signage or on websites, such as in “We refill Dell Cartridges”
    You can buy Dell compatibles.
    In these cases, the companies are not distributers of Dell products.

  • Mr. Sachse —
    Thanks for checking in. Not sure under what country’s laws you are seeking answers, but I can tell you that answering questions like these are usually very difficult and very much dependent on the specific facts.