Jamon Yerger is founder of Southern Perspective Shenzhen (“China Law Reference, doing it right the first time”), a consulting company in the bustling city of Shenzhen that provides advice on a range of business functions; the majority of which deal with manufacturing in China and legal protection for foreign companies engaged in supply chain activities. Mr Yerger wanted to go to a Starbucks. And he did not mean Starbucks in the generic sense, as some people already use it for any place where you can buy a daily doses of caffeine. Although “colors, script, umbrellas and even the glass awning over the doors” were similar to his old Starbucks, he found out, to his surprise, it was not coffee shop of this also in China pretty well known brand (I am not referring to the legal term well known mark. This would be the case if it is well known in China, and acknowledged as such by China). They only used a different name: St. Mars. So the place had the look and feel of Starbucks. IP Dragon agrees with Mr Yerger’s opinion that St. Mars is “clearly hitchhiking” on the Starbucks brand. So what could it mean in legalese?
The question is whether Starbucks registered the name Starbucks Coffee in China. If you are at the trademark search site, sponsored by the Trademark Office of the State Administration for Industry and Commerce (first select “Search of identical or similar TMs”, then fill in class 30 for non-alcoholic beverages), here, you will find that Starbucks has several trademarks. You could then argue that Starbucks Coffee and St Mars Coffee, using the identical font, and the identical colour, is confusingly similar and infringes Starbucks trademark. Maybe Starbucks separately trademarked the colour, which would lead to trademark infringement. The design of parts of the place could be patented in China. And if the copycat cannot be stopped by trademark law or design patents, copyright law might be a place of last resort. China is coming up with a Tort Law (December 5th, was the deadline for submission of comments), see here, and maybe the legal figure of passing off will be introduced, which I doubt, since it is more of a Common Law legal figure. Anyways read Mr Yerger’s article, see the pictures of the two places and decide for yourself here.
Read also Starbucks versus Xingbake here.
