Facebook Lost its Trademark Battle in China

Borsam IP
It’s hard to believe that the known trademark "Facebook" is invalidated in China. CNIPA (National Intellectual Property Administration) recently approved a request for the invalidation of the trademark "Facebook" No. 6389503, which registered by Facebook Inc.
The story began with the trademark application filed by Su Kaiming for "Facebook" No. 5359959 in Class 42 on May 19, 2006. Facebook Inc. launched all possible procedures to prevent its registration since 2009, and it took Su Kaiming about 11 years to finally get the registration on October 14, 2017.
(Photo: CNIPA)
On November 20, 2007, Facebook Inc. applied for the same trademark "Facebook" No. 6389503 and got the registration on April 21, 2014 on the same subclass of Su’s trademark application. And also, another application for “FACEBOOK” No. 14108731 approved on April 14, 2015. Even though Su’s application is filed and published earlier than Facebook’s application, the latter is still approved earlier than the former.
As revenge, Su filed a request for invalidation against Facebook’s registration No. 6389503 and 14108731 on January 15, 2019.
The court stated, both trademarks are in the same or similar subclass and composed of the same letters, which would easily mislead the source of the services. CNIPA thought the disputed trademark and Su’s trademark had constituted similar trademarks used in the same or similar services as referred to in Article 30 of Trademark Law and as a result approved the request for the invalidation.
Although when people mentioned “Facebook” , it reminds us of the online social media created by Facebook, Inc, still it cannot change the current situation where the application date of Su’s trademark is earlier than the disputed trademark, which makes Su’s trademark a prior one.
(Photo: CNIPA)

It’s never too early for an international brand to launch its trademark plan all over the world, especially in China, a hot market of trademarks. Facebook Inc. filed his first-round trademark applications in China after two years of its establishment and expanded to other classes one year later. It is not clear whether market access of Facebook in China affected its plan, but it is clear that it didn’t include correlative classes in the first-round applications resulting in the current situation.
Lessons from Facebook’s trademark disputes:
Here are several tips for trademark applications in China for overseas applicants.
  • Filing a national trademark application in China rather than designating in a Madrid international application.
  • Filing the trademark applications in the related classes as much as possible.
  • Filing applications for the Chinese transliteration or new Chinese names of your trademarks.
  • Filing all the applications above every three years.