Starbucks secures trademark win over Chinese rival
Resource from: Minter EllisonUpdated: Mar. 4th , 2007
The Shanghai High Court has recently upheld the decision of the Shanghai No. 2 Intermediate People's Court, finding that the US coffee chain, Starbucks, had its trademark infringed by a Chinese competitor, the Shanghai Xing Ba Ke Coffee Shop. The Court also confirmed that Xing Ba Ke had engaged in unfair competition, in breach of Chinese unfair competition law.
Starbucks registered 'STARBUCKS' and its Chinese translation '星巴克' as trade marks in China in 1996 and December 1999 respectively. The Chinese company Xing Ba Ke (星巴克)had its company name reserved in October 1999 and had been using the Xing Ba Ke name, and the English word 'Starbuck' on cards, menus, signs and invoices since it started trading in March 2000.
The Shanghai High Court held that because Starbucks had promoted its trade marks extensively in China through media and publicity, and had used both the STARBUCKS and its Chinese trade mark '星巴克' widely in China and for a long period of time, those marks were known by every household and amounted to 'well-known' trade marks in China, which receive special protection under the Chinese Trade Mark Law.
The High Court upheld the findings of the lower court that Shanghai Xing Ba Ke Coffee Shop had infringed Starbucks' trademark rights by using a variation of the green Starbucks logo and the name Xing Ba Ke, a transliteration of Starbucks in Chinese characters. In Chinese, 'xing' - pronounced 'shing' - means star, and 'ba ke' sounds like bucks.
The High Court also found that even though Xing Ba Ke had reserved the Chinese company name Xing Ba Ke (星巴克) before Starbucks had registered its Chinese name trade mark, Xing Ba Ke did not enjoy prior rights to the name because it reserved the name with the dishonest intention of using the good reputation and influence of the Starbucks company in China, and had thus engaged in unfair competition.
The Court ordered Xing Ba Ke to make a public apology to Starbucks for its conduct, cease all infringing activities, change its company name so that it will not contain Xing Bo Ke (星巴克) and pay 500,000 RMB (AUD$83,000) in damages.
