Jones Day faces court action in Chinese branding dispute
31 July 2012 | By Yun Kriegler
9 May 2013
3 April 2013
6 December 2013
12 July 2013
8 April 2013
A Chinese law firm based in Guangdong province’s manufacturing hub Dongguan has filed a lawsuit against Jones Day alleging that the US firm has damaged its reputation in an ongoing tussle over their Chinese brands.
Jones Day first registered its Chinese brand 众达, which is pronounced “zhong da”, with the Chinese Ministry of Justice in 2002.
Forty-lawyer Chinese firm 众达, which was established in 2003 and is known as Kingda in English, claims that it came up with its Chinese name based on a Chinese saying meaning ‘making concerted efforts to achieve a common goal’. Kingda refutes Jones Day’s claim that it copied the US firm’s Chinese name.
Kingda filed a law suit against Jones Day in No 1 Dongguan People’s Court in May. A hearing was scheduled to be heard at the end of July, but has been delayed to allow Jones Day time to prepare its response.
The dispute between the two firms started in 2005, when Kingda filed an application with China’s State Trademark Bureau to register the Chinese brand ‘众达’ as its trademark. However, when the application was published for objections it was opposed by Jones Day and the applciation was ultimately rejected. Kingda has applied for the decision to be reconsidered by the Chinese regulatory body, with that process still ongoing.
In 2010, Jones Day lodged an applciation with the State Trademark Bureau for the ‘众达 One Firm Worldwide’ trademark, but its attempt was also unsuccessful. The firm registered its ‘Jones Day’ trademark in China in 1999.
The dispute escalated in 2011 when Jones Day filed a complaint with the Department of Justice of Guangdong province and asked the regulator to press Kingda to change its Chinese name. According to the Measures for the Administration of Names of Law Firms, issued by the Ministry of Justice in 2010, Chinese law firms are not allowed to use the Chinese name of international firms that have already registered with the ministry.
Kingda alleges that the action taken by Jones Day has caused negative publicity that has damaged its reputation. In its court filing, the firm has demanded a public apology from Jones Day and asked the firm to stop making complaints to the regulatory body.
In an open forum on Kingda’s website, one of the firm’s lawyers said: “It’s another Chinese brand dispute between local and international institutions. It’s an unprecedented case in the legal sector, and both firms failed to obtain the trademark, so the result of the court case will help clear some uncertainties in this area. The legal action is not a bad thing for the industry. Although we were established slightly later than Jones Day, we have grown significantly both in size and reputation in our own right over the past decade and our Chinese name has become a valuable asset to our firm in the Guangdong region. It’s unfair to ask us to change it.”
It is not uncommon for a Chinese firm to have the same name as a well known international firm. The Chinese name of Beijing-based Anli & Partners is 安理 - pronounced as “an li” - which is exactly the same as Allen & Overy’s Chinese name.
Apart from Jones Day, a number of other well-known global brands have also been in legal hot water over Chinese trademark issues. Retired NBA superstar Michael Jordan, for example, has been in a lawsuit in China aganst Qiaodan Sports Company for the unauthorised use of his Chinese name (23 February 2012). Elsewhere, Apple settled a lawsuit with a Chinese company in a dispute over the iconic iPad trademark (9 December 2011).
Jones Day declined to comment. Kingda did not respond to requests for comment.