Thursday, January 10, 2008

Microsoft Falls One Step Behind in Protecting “Windows”

China Trademark Office (CTMO) dealt another blow to American software giant Microsoft in January 2008. Reportedly (here and here), it rejected Microsoft’s opposition of the registration of a trademark “Windows”by a Ningbo eye glass company. The company successfully registered “视窗” (“Shi Chuang”, which means windows of vision) in 2001, and it later tried to register “Windows” in 2003 for glasses (Class Nine). After a search at the CTMO’s database for opposition/cancellation decisions, I was not able to find the written decision regarding "Windows," and I will have to base my post on news reports. (note, I will continue to search in the next few weeks for the decision.)

Based on the report, as soon as the owner of the Ningbo Eye Glass company filed its application for the “Windows” trademark, it received a demand letter from Microsoft. As those letters typically go, it expressed its opposition of the registration of “Windows” in China, because Microsoft used it first. Sounds great, right?

Well, not necessarily for the CTMO, apparently. Prior use in the United States may establish common law trademark rights (which is not something that a major IP owner should hang its hat on), but in China prior use does not establish any trademark rights unless the mark has been registered, or unless the mark has been deemed legally famous for particular classes of goods and services.

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.

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.

(Too many facts are not available at this moment; so much of this post is based my assumptions and speculations. Once I get my hands on more details, I will write an update.)