Google defeats Beijing free-rider
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A Chinese court has ruled that Beijing Google's use of the word '谷歌' (Chinese for 'Google') amounted to unfair competition.
In 2000 Google Inc registered the trademark GOOGLE in China. On April 12 2006 Google chose its formal Chinese name, 谷歌, and made a worldwide announcement to that effect. It subsequently applied to register 谷歌 as a trademark and Google China as its trade name.
On the same day that Google announced its Chinese name, the defendant applied to register the name Beijing Google as its trade name. One week later, Beijing Google obtained a business licence. It subsequently applied to register 谷歌 as a trademark in China. Both applications for the registration of 谷歌 are still pending.
Google China sued Beijing Google for trademark infringement and unfair competition. Beijing Google argued that it was entitled to use the mark based on prior rights derived from the registration of its trade name. It further argued that Google China’s use of the mark caused confusion among consumers, and even requested that Google China pay compensation to it.
The court held that the GOOGLE mark was widely known in China. Therefore, Beijing Google had acted in bad faith in applying for the registration of 谷歌, in violation of the principles of justice and commercial morality. The court concluded that Beijing Google's use of the mark caused confusion among the public and amounted to unfair competition.
As Google China's application for the registration of the mark was still pending, the court did not have to consider whether use of a mark in a trade name would constitute trademark infringement under China’s trademark laws.
Finally, the court ordered that Beijing Google:
- amend its trade name;
- refrain from using any trade name including the word '谷歌' in the future; and
- pay Rmb100, 000 (approximately $14,644) in damages to Google China.
Yushen Liu, Rouse, Beijing
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