While ancient Chinese philosophy holds that “a white horse is not a horse ” a modern Chinese court has just held that Ferrari’s famous horse logo is…just a horse. The case is outlined on China Business Law Blog (h/t China Law Blog ). China Business Law Blog reports the main reasons for Ferrari’s failure to get the registration:
“In the Court, Ferrari averred that the Ferrari, along with the graphic of the horse which is closely tied to the Ferrari mark, should enjoy protection as famous trademarks because the Ferrari trademark has become well known around the world, and it has also gained considerable familiarity among Chinese consumers. However, the Court flatly rejected Ferrari’s claim of fame for its heroic horsy. It states three reasons:
1. Ferrari failed to provide evidence of the use and advertisement relative to the trademark at issue, meaning the “horse.” Ferrari proffered evidence supporting the famous status of a related trademark—“Ferrari”, but that is not sufficient to prove that that the mark in question is entitled to protection as requested.
2. China has established an independent system to recognize famous trademarks. The recognition of “Ferrari” as a famous trademark does not equate to the recognition of the horse graphic.
3. The focal issue in the suit is not the Ferrari trademark; rather it is the “horse” graphic. The “horse” cannot be bootstrapped to the Ferrari trademark for like protection”.
While the courts have already decided on the IP rights of horses, those of giant search engines are now under scrutiny. Danwei  has reported on another Beijing case, involving Google, and its Chinese name “Guge ”:
“Beijing Guge Science and Technology Ltd. (北京谷歌科技有限公司) is suing Google China (谷歌信息技术（中国）有限公司) for disrupting its business – both companies use the name 谷歌 and this causes confusion…The general feeling online is that Beijing Guge chose its name out of opportunistic motives and filed its complaint in a bid to profit from the media attention.”
Google, which has also had domain name problems , may win out in this case, but it is a reminder to big brands of the need for IP readiness at all times.
On the Ferrari case, China Law blog concludes: “Dude, register your IP in China.” And do it “before you go there”.
I couldn’t agree more.