Getting Westlaw registered as a trademark in China has been a Herculean task spanning ten years. Ryan Sheppard, vice president of Trademark Assets for Thomson Reuters, recently talked to Donna La Vardera, trademark manager for Legal at Thomson Reuters, about her dogged pursuit of the mark which was finally granted this year.

Donna, why is it so important to have our brands registered in China?

China is the second largest economy after the U.S. and is an important growing market for Thomson Reuters. Trademark protection is extremely important because China is what is called a “first to register” country. Unlike the U.S. where you obtain rights to your mark as soon as you start using it in commerce, absent a trademark registration in China you have no rights to your mark. A trademark pirate (of which there are many in China) or an innocent third party can apply to register your brand. If they are successful in obtaining registration, they can prevent you from using your mark in China. There is a provision that unregistered marks may be protected but only if it can be proved that the mark has achieved high fame in China. That is a very difficult hurdle to overcome.

How many trademarks do we have in China?

We have approximately 50 registered trademarks in China and we are currently prosecuting applications for approximately 15 marks. The number of application filings in China has increased over the last several years.

It’s my recommendation that applications be filed in China for any new brand, regardless of whether or not the mark will be used in China in the near future. We need to make sure that if sale of a product eventually expands into China, we will have the right to use our name.

Tell us about Westlaw. When did we first file in China and why was our registration refused?

We first filed an application to register WESTLAW in October 2002. The mark was refused registration on the basis that the mark lacked distinctiveness and was merely descriptive of “western law.”

How did we tackle the problem and eventually reach a successful conclusion?

We first argued that the mark was not descriptive, that the name was derived of the surname of the company’s founder, John B. West. Hence the name WESTLAW. We also argued that we did not provide “western law.” Unfortunately, the Chinese Intellectual Property Office (CIPO) holds a very high standard for distinctiveness and refused to accept our arguments. We appealed the decision, submitting an argument that WESTLAW has become known to the Chinese legal community as a trademark, not merely a descriptive term along with evidence of use of WESTLAW in China. Again, our argument was unpersuasive, particularly since we had not made significant use of WESTLAW in China prior to 2002. A final decision denying registration of WESTLAW was issued by the CIPO.

Because WESTLAW is such an important brand,  we were determined to exhaust all avenues to succeed in registering the mark. Our next recourse was to file a lawsuit with the Beijing Intermediate People’s Court (IPC). It was a long process! Our legal firm in China worked closely with our local business to obtain additional evidence of use. Although the IPC did not have to take the additional evidence into consideration because it had not been submitted to the CIPO, local counsel succeeded in convincing the IPC to review the evidence. Ten years after the application was filed, an favorable decision was finally granted. The IPC held that although WESTLAW is easily understood by consumers as “western law” the mark had obtained a certain fame to the relevant public through extensive use and advertisement.

This has been a long road! Is this the most complex application you have ever handled?

Yes, this is the longest and most intensive effort I have put into registering a mark. It is not easy working with the CIPO. There are specific requirements for submitting documents which have to be notarized and legalized by the Chinese Consulate.

The second most challenging registration dates back to pre-THOMSON REUTERS days, when we were just THOMSON. We had a really difficult time registering the THOMSON name as there is a French company named THOMSON that has been around longer than us. Their THOMSON registrations prevented registration of our THOMSON brand in most of our major jurisdictions. It took the name change to THOMSON REUTERS and several meetings with THOMSON and our respective key people to finally reach an agreement whereby we can both peacefully co-exist.

Is there anything else we should know right now?

Yes! FINDLAW is another China success story – hot off the press. Although it did not take quite as long, it was a challenging process as well. Not only was FINDLAW also deemed non-distinctive, we had to deal with a third party that was using the FINDLAW name and findlaw.cn and findlaw.com.cn domain names. We were successful in convincing the CIPO that FINDLAW was distinctive. However, the “pirate,” Guangzhou, filed an opposition against registration of FINDLAW on the grounds that their trade name and domain names were famous. They also argued that FINDLAW is descriptive and therefore not entitled to registration. The opposition was dismissed on the grounds that Guangzhou did not provide sufficient evidence to prove that the domain names http://www.findlaw.cn/ and http://www.findlaw.com.cn/ acquired a high level of fame prior to our trademark application filing date. The CIPO also ruled that FINDLAW is not descriptive. Guangzhou appealed the decision, but the decision on appeal was rendered in our favor.