Foreign Trade Marks: Keeping Up To Speed

Author:Ms Ilse Du Plessis

South African companies that export their goods and services are well aware of the need to clear and register their trade marks in the countries where they do business. They do, however, also need to keep abreast of foreign trade mark developments. Here's a heads-up of some interesting developments from around the world.


Despite the apparent economic slowdown in China, South African companies remain interested in doing business there. Some may have been alarmed at reports regarding the Chinese trade mark woes of former basketball great, Michael Jordan. The player-turned-businessman has joined a long list of global giants that have experienced trade mark difficulties in China - think companies like Apple, Gucci, New Balance and Tesla.

The story about Michael Jordan is that he's lost his trade mark case against the Chinese company Qiaodan. Jordan is a well-known brand in the area of athletic shoes and apparel, and there are registrations for the trade mark in China. Jordan's basketball player silhouette logo is equally famous. Qiaodan, a company with no fewer than 6000 sports stores, has managed to register trade marks for its name in the face of the Jordan registrations - this is significant because Qiaodan is the Chinese transliteration of Jordan. Qiaodan also uses a very similar-looking basketball player silhouette. Jordan feels so aggrieved at the Chinese court's decision that he's taking the matter on appeal.

It is, however, worth bearing in mind that the trade mark landscape in China has improved greatly over recent years. Although China does have a trade mark registration system that favours the party that first files its application, it has in the past provided some relief to the owners of well-known trade marks. More recently, it has also required trade mark applications to be filed in good faith. In addition, an application can be opposed if the person who files it knew or should have known of the opponent's trade mark rights. Chinese law also has penalties for attorneys who act in bad faith in trade mark matters, and it has increased the damages that can be awarded for infringement to include triple damages in cases of bad faith, and penalties of up to 500% of profits earned from infringement.

All in all, a much improved and more welcoming system than before!

European Union

The EU remains a popular place for South African companies to do business and there is, of course, a single registration system known as the Community...

To continue reading