12 September 2016
Yuanhui Fu, a Chinese swimmer and bronze medallist at the Rio Olympics, won the hearts of people in China after some awkward – yet heartfelt – poolside interviews with her trademark animated facial expressions. But she could hardly have expected to find herself in the middle of a trademark battle.
Chinese media recently reported that Qingyu Wang, a famous musician in China, successful trademarked Fu’s signature phrase “prehistoric energy” for four main classes, just days after Fu’s hilarious interview went viral on Chinese social media.
Wang’s trademark covers dietetic foods and drinks, nutrition supplements, pharmaceutical products, preserved and canned foods, games and playthings, sports equipment, education and TV productions, according to news reports.
During the interview, which followed Fu’s third-place finish in the women’s 100 metre backstroke semifinal, Fu exclaimed with an expressive face: “Wow, I was so fast! I’m very, very satisfied with my result. I didn’t hold back. I used all my ‘prehistoric energy’!” She went on and won a bronze medal in the final the next day.
The phrase Fu used in her interview – 洪荒之力 – has been variously translated as prehistoric energy, mystic energy and prehistoric force, among others.
The video clip immediately broke on the internet in China and beyond, as legions of fans created emojis, cartoons and videos in her likeness. The number of her followers on Weibo, China’s Twitter-like microblogging platform, climbed from 550,000 before the Olympics to 4 million in a few days, according to The Guardian.
Her unusual phrase “prehistoric energy,” which originates from a Chinese fantasy drama, quickly went viral and became a popular catchphrase online.
Wang’s move to trademark Fu’s quirky term was met with mixed reactions: While some praised his business acumen, other criticized him for being opportunistic and riding on someone’s coattails. Commentators also questioned the legality of his filings.
However, IP experts point out that there is no stipulation in Chinese trademark law which forbids trademarking a catchphrase or a saying coined by someone else. “Although ‘prehistoric energy’ suddenly became popular due to Fu’s use, neither she or anyone else enjoys any right on the phrase, so Wang’s application has not infringed others’ prior rights,” says Joanna Yan, a Beijing-based partner and trademark attorney at LexField Law Offices. “I also do not think the registration of the mark on the designated goods and services has any negative influence to the society, or is it directly descriptive of the designated goods and services.”
In addition, Yan suggests that earlier media reports were incorrect to say that Wang has already trademarked the phrase, because his applications are still pending for examination by China trademark office (CTMO). It usually takes no more than nine months for the CTMO to finish examining a trademark application, if no office action happens.
Wang’s applications currently cannot be found on CTMO’s public online database, as it often takes two or three months for new applications to show up.
Yan also notes that a number of people have already beat Wang to trademarking the phrase in other classes before his filing. One application in Class 30, which was filed by a tea manufacturer, has been preliminary approved for registration and is now published for opposition. if no opposition is filed during the publication period, Prehistoric Energy-branded tea or coffee may be found on shelves in China very soon.
This, however, does not mean Wang’s applications will be rejected. “There are in total 45 classes, and goods and services in different classes are normally not considered similar,” Yan tells Asia IP. “As long as the goods and services covered by his trademark are dissimilar from the goods and services covered by the prior marks, the prior applications should not block the latter applications.”
If someone manages to successfully trademark Fu’s catchphrase, the trademark owner can only prohibit prominent use of the term as a trademark on identical or similar goods and services. In order words, descriptive use of the phrase should not be considered infringing the trademark rights.
China uses the first to file trademark system, meaning that the ownership of the mark goes to the first party who files for registration. Countries such as the US use a first to use system, meaning that a party filing for a trademark must have used it in commerce or be able to show an intention to do so in the future. This makes life difficult in China for even the largest foreign companies, as opportunistic trademark squatters are constantly snatching up trademarks in the hope of earning a profit.
In 2012, Apple had to pay US$60 million to a Shenzhen-based company to settle a protracted legal dispute over the ownership of the iPad trademark in China. Drug company Pfizer also lost a years-long battle over the Chinese name of Viagra, which was first registered by a Chinese company.
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