Yakult likely to prevail in Hong Kong but not in China

In a confusing case involving Japanese yogurt manufacturer Yakult Honsha and Chinese manufacturer Yakudo Group, Hong Kong's High Court has issued a temporary injunction preventing Yakudo from producing or marketing lactic drinks in Hong Kong using YANG-LE-DUO, the Chinese equivalent of the trademark YAKULT, until the dispute over ownership of the trademark in Hong Kong is settled.

Yakult produces and markets its well-known brand of lactic drinks in Taiwan under the Chinese brand name YANG-LE-DUO. Yakudo claims that it is the registered owner of the YANG-LE-DUO mark in China and therefore has the right to produce and market yogurt drinks using that mark. Despite the Hong Kong court's order temporarily preventing Yakudo from marketing its products in Hong Kong until the trademark dispute is settled, Yakudo has indicated that it will continue to produce and market the products on the mainland since Hong Kong courts have no jurisdiction over mainland China-related matters.

This is one of many cases involving China-based companies that have registered marks in China that are well-known in Taiwan. This is able to happen because trademark registrations in China are granted to the party that is first to register a mark, rather than the party that is first to use the mark. In addition, while the PRC Trademark Law provides protection to well-known marks, the trademarked products must first be sold in mainland China before counterfeits can be stopped.

Kwan-Tao Li, Lee and Li, Taiwan