Trademarks tricks

As a 150-year-old brand, Goubuli is famous across China and even known to many foreigners.

There is a saying that "if you haven't tasted Goubuli steamed buns in Tianjin you have not truly been to Tianjin".

But when the maker of the time-honored brand planned to expand overseas, it suffered a surprising setback.

The trademark for the Goubuli brand, valued at 757 million yuan, had already been registered by a Japanese company in 1993.

"We lost our rights in Japan and that action was harmful for our plan to expand the Goubuli brand and export our product," says Wei Xianbo, intellectual property consultant of the Tianjin Goubuli Catering (Group) Co.

After extensive negotiations, Goubuli recovered the trademark in a settlement and registered its own brand in Japan in November.

"It was a landmark success for old and famous brands to reclaim their rights in overseas markets," says Zhou Xueqian, head of general affairs of Goubuli.

Established in 1858, Goubuli became a State-owned enterprise in the 1950s and evolved into the Tianjin Goubuli Catering (Group) Corp in April 1992.

It was reorganized into a shareholding firm in February 2005. Since then a high priority has been to protecting the well-known brand and a team for that purpose was formed, according to Zhou.

After the dispute arose with giant Japanese chain retailer Daier, which registered the trademark for Goubuli in Japan, the team was quick to learn the relevant laws in Japan in a bid to recover its rights.

In July Daier announced it would give up the Goubuli trademark. Insiders say Goubuli's victory could have a far-reaching impact on other Chinese time-honored brands.

Today other old Chinese brands can be found in many other countries, including Wangzhihe fermented bean curd, Wuliangye liquor and Tongrentang traditional Chinese medicine. But experts warn consumers to be careful in their purchases, as they allege many brands have been illegally registered by foreign entities instead of by their original makers.

As a result, a few Chinese companies have filed lawsuits against overseas companies to recover the use of their brands. But many others have not followed due to cost and time constraints.

A recent case is centuries-old Beijing fermented bean curd Wangzhihe, whose brand was registered by German food import-export agency OKAI. Wangzhihe filed a lawsuit against OKAI that was heard by a Munich court on August 8. Wangzhihe has prevailed in the case.

Sichuan Baijia instant potato noodles is taking similar action, as OKAI also registered the Baijia brand in Germany, as well as that of QiaQia sunflower seeds and Laoganma spicy sauce.

"Most trade friction, including trademark disputes, are resolved through legal channels. Although many domestic companies are planning to expand overseas, awareness about trademark registration and patent protection remains low, " says Wei.

In the case of Goubuli, the Japanese company failed to replicate the bun's true recipe, so the firm was not enthusiastic about renewing the registration. They returned the trademark to the Chinese company for 30,000 yuan.

"Time-honored brands are our national treasure. After such a long history of workshop-style operations, we have the responsibility to protect them and sustain them," says Zhou.

Yet the battle is not over. Registrations of Chinese brands by foreign companies are still common in overseas markets such as Australia, the United States and Malaysia.

Chinese companies naturally think "malicious registrations" hurt their brands.

To augment its overseas expansion, Goubuli recently applied for a new English-language trademark - "Go Believe".

"The application for an English trademark registration reflects our growing awareness in IP rights," says Zhou. The application is pending an approval from the national trademark bureau.