Words & Phrases 词汇与词组 - Legal games afoot

"If I hear about Arsenal glasses, of course I will be interested in them," said 26-year-old Yu Li, referring to products relating to his beloved
football club. But there's a catch.

"I might not buy them after I discover they [the products] actually have nothing to do with the club. I am afraid young fans may not be able to identify the difference," he added. "I really hate this immoral tactic of 'borrowing' the reputation of others, for your own benefit."

With much of the Western world mired in recession, the burgeoning markets of China can seem like a lifeline for companies seeking to rejuvenate flagging profits. Imagine their shock however, when they arrive on Chinese shores only to discover that their brand name is already well established - by someone else.

These legal quandaries occur more often than you might think and it's not just multinational companies that are losing ground. English football clubs have discovered, to their chagrin, that merchandise bearing their brand is being sold by local companies.

With the Euro Cup in full swing, attention has been focused on legal cases involving Chinese companies that have allegedly infringed upon the trademarks of premier-league football clubs Manchester United and London-based Arsenal. The clubs are nervously awaiting the results of legal proceedings at the Beijing No.1 Intermediate Court in Shijingshan district. However, it's not a matter of two companies facing off against one another, the clubs are actually suing China's trademark watchdog, in an attempt to force the trademark board to review previous decisions.

Slipping one past the goalie?

In the case of the Arsenal trademark, Daguangming, a Zhejiang-based glasses manufacturer, registered "Arsenal" in both English and Chinese, for a brand of glasses in 2004.

Although the English club had already registered its trademark for certain categories of products in China, the trademark watchdog still issued the name to Daguangming, claiming that Arsenal had failed to "occupy" the usage of its name in terms of glasses.

Meanwhile, Manchester United is suing the board for allow a man surnamed Wang to use the name "Manchester United" for a series of toys.

After the two clubs raised their objections, the board still refused to revoke the Chinese trademarks, arguing there had not been "any negative outcomes following the registration."

"The conduct of the board has been proper, as the reputation of Arsenal has been built on the football field through TV broadcasts or newspaper reports, rather than being a glasses manufacturer," explained Liu Guizeng, co-founder of the Beijing-based Hanhao Intellectual Property agency.

Court of public opinion?

It's one thing to sue a company. Taking on the China Trademark Board is another matter. The football clubs seem to be facing an uphill battle, but there is a faint chance of victory if they can explain how these decisions affect the public interest.

"The decision-making processes used by the trademark watchdog and the judicial departments are different," said Wang Hao, general manager of Beijing-based BSFD Intellectual Property Agency Limited. "In general, when the court makes judgment, it will give a more comprehensive ruling which includes factors such as the social ramifications of the usage of the trademarks."

"Therefore, if the clubs can prove that the usage of their names is detrimental to the public interest, the court will stand by the clubs," Liu said. "Arsenal and Manchester United should show that they have established a unique sports culture, or social culture around the world, and that the infringement upon their trademarks will affect society."

This possibility was illustrated in a recent example, related to the famous wizard Harry Potter. The studio who owns the Harry Potter trademark, Warner Bros, accused a man surnamed Yao of trademark infringement after he registered the Chinese characters of Harry Potter and its pinyin HaLiBoTe for several categories of merchandise in 2000.

This year, the court finally ruled in favor of Warner Bros, stating that Yao's registration of the Harry Potter trademark "will negatively affect the public interest, as Harry Potter, already a famous character from novels, is well-known among the public and has generated its own social presence."

"The court considered the fact that the violation of the trademark may mislead young people in China," noted Liu.

In the case of the football clubs, a "social influence" could be difficult to prove. "The clubs need to carefully collect and present their evidence to the court," said Wang, adding that in his experience, many foreign companies often ignore this procedure, ultimately leading to them losing their cases.

"They often just show several pages outlining the brand's history and popularity, which is far from persuasive evidence," he said.

American singer Britney Spears is among those who have failed in their endeavor to stop Chinese companies from using their brand name. She appealed to the trademark board to revoke the trademark "Britney" in both Chinese and English, under the category of clocks and watches from a Shenzhen-based company. The court dismissed her appeal due to a lack of evidence.

First come, first score?

The "first come, first serve" principle often applies in the trademark world, but in some cases it doesn't seem reasonable. And indeed, consumers may be misled when buying products.

"I am a big fan of Arsenal and Chelsea [another London-based team], and often watch their games at midnight," said Yu. The football fan and IT professional even went to the UK to visit the two clubs in 2010.

While in the area, he bought souvenirs of the clubs, including hats, jerseys and key rings with the club logos. He said that he wouldn't buy these kinds of products if they weren't authentic products authorized by the club.

This highlights a point made by Liu, who said that trademark infringement is also a consumer rights issue, particularly in cases wher consumers are unaware that they are being misled by the logo of the products.

"These cases should draw the attention of foreign sports clubs and make them pay attention to the protection of their brands in China," said Liu. "It is also about protecting the consumer rights of their fans."

In the latest Brand Finance Football List, which was released in May and details the value of various football brands, Manchester United topped the list with a commercial value of 547 million pounds ($858.92 million), followed by Fussball-Club Bayern Mün in Germany and Madrid Club de Fútbol in Spain. Arsenal ranked at sixth place.

Chinese you need:

Football club：足球俱乐部 (zú qiú jù lè bù)
Immoral：不道德的 (bú dào dé de)
Rejuvenate：使回春 (shǐ huí chūn)
Brand：品牌 (pǐn pái)
Trademark：商标 (shāng biāo)
Watchdog：监视者 (jiān shì zhě)
Sue：打官司 (dǎ guān si)
Judicial：司法的 (sī fǎ de)
Ramification：后果 (hòu guǒ)

Detrimental：有害的 (yǒu hài de)
Violation：违反 (wéi fǎn)
Reasonable：合理的 (hé lǐ de)
Souvenir：纪念品 (jì niàn pǐn)
Authentic：可信的 (kě xìn de)
Infringement：侵犯 (qīn fàn)