13
Sep/02

The Yakult Swallows and the Protection of Famous Marks in China


This article describes an injunction obtained by Yakult (the famous Japanese maker of a Yogurt drink and owner of the Yakult Swallows) received against a competitor named Yakudo.  The injunction applies to Hong Kong, which is a separate jursidction from the PRC (for now).  The article goes on to discuss the larger prize – China (where Yakudo appears to have canceled Yakult’s registrations based on non-sue).  Yakult’s dilemma touches on the thorniest question regarding the protection of famous marks – what does famous mean?  Specifically – famous to who and famous where?  Countries may use similar language in their trademark statutes in granting protection to famous trademarks, but their courts may define fame in a number of different ways such as famous in that country, or internationally famous, or famous to a relevant sub-set.  A typical fact pattern occurs where the local consumers are unaware of what has become successful in another country, but the local merchant group makes a business of knowing exactly that, and it has a vested interest in foreclosing foreign competition.  In that situation, a famous mark protection may serve more as an unfair competition statute.  However, if the country narrowly defines ‘famous’ as whether the mark is known only to the local consumer class, the foreclosure gambit can succeed.

Fred Mostert’s book, by the way, is the place to start when contemplating the protection of famous marks

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