International Law

Google Trademark Case is Interesting After All

By Stan

(I just re-read this post. It is extremely wonkish, so if you aren’t an IP lawyer, I would not suggest reading this.)

This bit of cryptic news came in yesterday:

Google Inc, owner of the world’s most-used Internet search engine, won a lawsuit in China over its subsidiary’s name and trademark in Chinese, ending an 18-month dispute with a local company.

Google China will be paid 100,000 yuan (US$14,624) in compensation from Beijing Guge Science and Technology Co, according to a filing by Beijing’s Haidian District court yesterday. In 2006, Google named its unit in the country ”Gu Ge”, which means ”harvesting song” in Chinese. A year later, Beijing Guge sued Google, claiming the California-based Internet company was using its name. The court ruled that Beijing Guge must stop using the name because it belongs to Google’s China unit, according to the filing.

The blurb is from Shanghai Daily, which as usual fails to give us any useful details for actually understanding this IP case.

Luckily I have tracked down some more info on this. As I end up saying a lot, I cannot vouch for the accuracy of this information, but this is what I have heard as to the chronology here (sorry, I don’t have exact dates):

1. Google’s China sub announced its name "Gu Ge" publicly;
2. Beijing Gu Ge S&T Co. set up its company with the name "Gu Ge" subsequent to Google’s announcement;
3. Google’s subsidiary was formally established, also using "Gu Ge" in its trade name.
4. Beijing Gu Ge S&T Co. sued Google (not sure about the theory, but the basis was the trade name) — this case was dismissed; and
5. Google sued Gu Ge S&T Co. under a trademark theory (I assume here that the mark was registered prior to the other party’s trade name).

Well then, good stuff. We have a trade name vs. trademark case. Mixed IP cases used to be a horrible headache in China, although things have gotten much better in recent years.

The key to who wins is generally the registration date — who filed first, essentially. Therefore this issue of a public announcement by Google that they were going to use a particular name is probably not too relevant. Sorry Common Law lawyers, usage is not good enough for trademark exclusivity here, registration is.

Just to be thorough, though, that announcement about the name could have ended up being important evidence if this was an unfair competition case or if the trademark registration was being challenged as being made in bad faith. I couldn’t find any indication that those issues came up here, so we’ll end it here.

Full post as published by China Hearsay on January 08, 2009 (boomark / email).