Monday, July 9, 2007

Ferrari is Famous, But Is the Horse Too?

The Beijing 1st Intermediate Court was called to decided whether the picture of the horse corresponding to the Ferrari trademark is a famous trademark. And it decided that it is not, therefore not entitled to protection that the Ferrari trademark has in China.

Ferrari’s “horsing” saga with a Chinese trademark registrant started back in 1996. A Chinese department in Guangzhou, White Clouds Sports Merchandise (“While Clouds”), sought to register a trademark with a picture of a horse for use in selling a line of clothing on April 1, 1995. When the Chinese Trademark Office published the prospective trademark for public opposition on September 7, 1996, Ferrari filed a timely opposition to the registration, claiming that the trademark at issue would cause confusion among consumers with respect to the emblematic Ferrari horse. The Chinese Trademark Office did not buy Ferrari’s argument, citing that White Clouds registered the graphic of the horse first.

Ferrari appealed to the trademark review board. It advanced the argument that both the Ferrari with the horse graphic trademark and the horse graphic alone constitute famous trademarks; therefore, the registration sought by the opponent, if granted, would cause confusion among consumers. Unfortunately to Ferrari, the review board affirmed the trademark office’s decision. Ferrari then brought its battle to the people’s court for relief.

In the Court, Ferrari averred that the Ferrari, along with the graphic of the horse which is closely tied to the Ferrari mark, should enjoy protection as famous trademarks because the Ferrari trademark has become well known around the world, and it has also gained considerable familiarity among Chinese consumers. However, the Court flatly rejected Ferrari’s claim of fame for its heroic horsy. It states three reasons:
1. Ferrari failed to provide evidence of the use and advertisement relative to the trademark at issue, meaning the “horse.” Ferrari proffered evidence supporting the famous status of a related trademark—“Ferrari”, but that is not sufficient to prove that that the mark in question is entitled to protection as requested.
2. China has established an independent system to recognize famous trademarks. The recognition of “Ferrari” as a famous trademark does not equate to the recognition of the horse graphic.
3. The focal issue in the suit is not the Ferrari trademark; rather it is the “horse” graphic. The “horse” cannot be bootstrapped to the Ferrari trademark for like protection.

After more than ten years of trekking in the Chinese legal system, Ferrari got a disappointing verdict. Hopefully, Ferrari got something else too, a lesson to register its trademark, related trademarks as early as possible. Oh, do some advertising on the horse as well, in China!

7 comments:

Effective Chinese said...
This comment has been removed by the author.
bobby fletcher said...

Let's see the pictures. Is there distinguishing features between the horses?

Also is it fair for Farrari to claim all forms of pracing horse (facing both ways, various poses)? Farrari's logo is "prancing horse in the Shield" with it's name underneath. Is White Clouds Sports claiming everything, including the shield and name underneath?

Brad Luo 罗竞雄 said...

Bobby--

without seeing a close-up actual comparison of the two "horse" symbols, I don't know the extent of the alleged "similarity" between the two.

However, that is beside the point for two reasons:
1. Ferrari failed to obtain a trademark for the very "horse" for which it was seeking protection in the Chinese Court. Had White Clouds Sports Merchandise been an automobile company, the result of the case of would be vastly different since Chinese anti-dilution law would kick in to protect Ferrari Inc.

2. It would not surprise me that Ferrari failed to get a trademark for the horse not for lack of trying but because of the "general" nature of the symbol itself. In order to have a valid trademark, the mark itself has to meet certain minimum standards in the trademark office. Given the fact the Ferrari registered "Ferrari", it is highly unlikely that its lawyers forgot to register the "horse". But this is only my guess which is not a good answer to your question at all.

bobby fletcher said...

Brad, Farrari's logo is distinct not because of the prancing horse, but it's also inside a muted yellow shield. Also Farrari put the name underneath the prancing hourse shield.

This reminds me of the left/right facing crocodile logo people sued over few years ago in China.

Brad Luo 罗竞雄 said...

Bobby--
With respec to, "This reminds me of the left/right facing crocodile logo people sued over few years ago in China", I am not sure we are talking about the same thing, but please read my June 1, 2007 post regarding the Crocodile trademark lawsuit in China.

Thanks for the info on what makes the Ferrari mark "dinstictive", which by the way has unique meaning under the U.S. trademark law. A mark can be inherently distinctive or reach the requiste distinctiveness through secondary meaning even if the mark itself is considered descriptive in nature.

Unless and until China amend its trademark law (which is in the process), Ferrari Inc. cannot get protection in China for the horse logo/symbol because it is not registered. Note also that even the TRIPS cannot help Ferrari in this respect since it also requirs a mark to be registered in the resident country where a mark owner attempts to seek anti-dilution protection in dissimilar categories of goods or services.

Ferrari Inc. might be in a little bit of pickle if the horse logo is considered to be too broad and general for trademark registration purposes in China. If that happens, it cannot register; thus no protection.

One way out is to register the horse under the Trademark law Art. 14 (i think...) as a well-trademark as soon as possible for designated categories of goods/services.

Toller said...

dear mr. Luo, is there a new CTL after the one you quote in your paper (of may 2009) you wrote with mr. ghosh? or is the CTL 2001 still effective?

Brad Luo 罗竞雄 said...

Toller:

No. The 2001 TML is still the law. Amendments are in the works, though.