According to the news from local media in China, Starbucks Corporation (NASDAQ: SBUX) recently filed a lawsuit against the Trademark Review and Adjudication Board (the “Board”), for it was refused by the Board for the application of the review of 沙巴克 (which is similar to the Chinese translation of Starbucks 星巴克 in Chinese) trademark application on mineral water products(沙巴克is similar to the translation of Starbucks 星巴克 in Chinese). 沙巴克 was applied by an individual on 16th July of 2003 on the mineral water beverage, which in Starbucks Corporation’s opinion shall constitute the similarity of identity of its local trademark of 星巴克, and therefore, Starbucks Corporation filed a trademark review to the Board and also applied a official establishment of the well-known trademark of 星巴克 in the field of Café, Café operation & service and coffee beverage.(the image above is the Starbucks café and the poster of the World of Legend)
Nevertheless, the Board determined that two trademarks bear different first Chinese character (星巴克 and 沙巴克), also they vary in the pronunciation and meaning, and for this reason the claimed confusion by Starbucks Corporation could not be established, also there had provided no evidence from Starbucks Corporation of the well-known of the 星巴克 trademark before the application of 沙巴克. Basing on these reasons, the Board finally refused the objection application by Starbucks Corporation.
Not alone, the attorney of our website once handled similar cases when handling the similar case. Shengqu Information Technology (Shanghai) Co., Ltd, affliliated to Shanda Company (NASDAQ: SNDA) registered 沙巴克 in all 45 classes, which was objected by Starbucks Corporation. However, 沙巴克 is the name of castles in the online game Mir and the World of Legend run by Shanda, and for its high reputation among the players, Shanda registered the trademark in all classes.
Back to the case, what made Starbucks decide to file the objection? That possibly is the link between the products behind the trademarks. The brand of 星巴克 is mainly adopted on café, coffee and tea beverage, and the 沙巴克 covers mineral water beverage which is a related product to that of Starbucks Corporation. But that could not deny the difference between two trademarks.
1. For the meaning between the trademarks. 沙巴克 is the name of a castle in the game, which shall be a geographic sense, and to register the place name as the trademark of mineral water product could constitute significance, while 星巴克 is the translation name of Starbucks with half literal translation and half free translation.
2. Comparing on the pronunciation, the pronunciation of the objected 沙巴克 in Chinese is sha-ba-ke, while it’s xing-ba-ke of 星巴克, which is easy to be distinguished.
3. By the characters, the first one of 沙巴克 is 沙, while it’s 星 of 星巴克, though the rest part are the same, the consumer is not likely to confuse the trademarks.
In the case, Starbucks Corporation is more likely filing the case with no detailed research on 沙巴克, which may be common in USA, a country of advanced lawsuit culture, while in China, the lawsuit is the last choice for people in problem solution, therefore any losing in the case may be interpreted as right protection failure and could damage its public image. And for this reason we suggest international or major enterprises to take languages, language habit and other local affected elements into their consideration when protecting their rights on the trademark.
Other recommended posts on our website:
1. The Actual Term of Trademark Registration in China
2. How to Apply for the Trademark Record in China Custom
3. How to improve the success rate of trademark registration in China?
4. Matters for Attention in Trademark Refusal Review in China
5. Introduction of China’s Legal System of Trademark Renewal
6. Introduction on the Regulations concerning the Capital Contribution in IPR or Domain Name in China
7. The Copyright Registration in China Could Be FREE?
8. China Copyright Protection Term Longer than EU’s?
9. Matters for Attention in the Patent Preliminary Injunction Application in China(I)
Author: Albert Chen
Attorney-at-law of DeBund Law Offices
Co-author: Mr. You Yunting
Founder & Editor-in-Chief of Bridge IP Law Commentary
Partner & Attorney-at-law of Shanghai DeBund Law Offices
Email: Bridge@chinaiplawyer.com, Tel: 8621-5213-4900,
You can also find us on Facebook, Twitter and Linkedin.
Bridge IP Law Commentary is a website focus on the introduction of commercial laws in China, especially the intellectual property laws. All the posts here are our original works. And all news or cases referred here are from public reports, and our comments or analysis are of due diligence, neutrality and impartiality, representing our own opinions only and are our original works. You may contact us shall you have any opinions or suggestions.
Short Link: