There have been a few recent developments in Chinese eco-marks (my term for marks used in connection with green goods or services), both in China and in the United States.
Starting with by far the weirdest news item, a small Chinese electric car technology company called Hong Yuan Lan Xiang (HYLX) has filed a trademark application in China to register the name SNOWDEN for for its “top secret technologies and products” (see the Green Car Reports article here).
These include new removable batteries, technologies for increasedÂ charging speeds,Â and technologies for remodeling conventional cars into electric-capable models.Â Apparently, the company thinks the top secret nature of its technologies makes SnowdenÂ the perfect brand name for them.
Also in China, U.S. electric carmaker Tesla Motors has encountered what appears to be a cybersquatter and prior registrant of the TESLA mark.Â According to this Reuters story, Zhan Baosheng owns a Chinese trademark registration for TESLA, runs a web site using the Tesla China domain (www.teslamotors.com.cn), and operates a Tesla-branded account on the Chinese microblog site Sina Weibo.
Zhan’s web site includes a Tesla brand logo that is almost identical to that of Tesla Motors and shows a car quite unlike any of Tesla Motors’ vehicles.Â It seems likely that Tesla Motors will have to buy out Zhan to clear the way for its trademark rights and branding efforts in China.
Finally, an eco-mark infringement suit covered in a previous postÂ has come to a close (at least in the trial court).Â This case pittedÂ SunEarthÂ (owned and operated by the Solaray Corporation since 1992), which manufactures and sellsÂ solar thermal collectors and related components, against Ningbo Solar Electric Power (Ningbo) and its U.S. subsidiary, which wasÂ sellingÂ solar photovoltaics underÂ the SUN-EARTH (and Design) mark:
After filing a proceeding in the USPTO Trademark Trial and Appeal Board to cancel the â€™941 Registration and trying to negotiate a settlement with Ningbo, SunEarth sued forÂ trademark infringement, cancellation of the registration, and other claimsÂ in the Northern District of California in October 2011.
In a recent decision, the court held that Ningbo was liable for trademark infringement and ordered the USPTO to cancel the ‘941 Registration.Â Although Ningbo’s trademark registration was entitled to a presumption of validity, SunEarth successfully rebutted the presumption by demonstrating prior use of the mark, a fact conceded by Ningbo:
Plaintiffs have introduced evidence that they have used the term SunEarth as a trademark, trade name and service mark in the United States since 1978.Â Defendants have conceded that Plaintiffs have “common law prior user rights in several states of the United States to its SunEarth mark for solar thermal systems.”
Although Ningbo disputed the geographic extent of SunEarth’s common law prior user rights, the court found that SunEarth had established “legally sufficient national market penetration over their trade name and mark” prior to Ningbo’s first use of the mark.
From there, it was simply a matter of conducting a routine likelihood of confusion analysis, which favored SunEarth due to the similarity of the marks, theÂ proximity of theÂ goods (solar photovoltaics and solar collectors), and the similar trade channels such as solar product shows, specialty retailers, and trade magazines.