A previous post reported on Tesla’s Chinese trademark problem. Apparently, a businessman named Zhan Baosheng had registered the TESLA (or “Te Si La” transliterated) trademark in China, blocking the American automaker from using the mark there.
Mr. Zhan was also operating a web site using the Tesla China domain (www.teslamotors.com.cn), and operating a Tesla-branded account on the Chinese microblog site Sina Weibo.
As part of a recent press release announcing its plan for growth in China the company said it resolved the trademark issue. More particularly, Tesla obtained a court decision granting it the right to use the TESLA mark in China (see the story here on Green Car Reports and covered by Clean Technica here).
Veronica Wu, Tesla’s vice president for China operations, said the company had won this right without the need to pay Mr. Zhan (who had apparently hinted that he would sell the trademark for millions of dollars). According to Wu, “we went to court and won.”
Though technically Zhan may have been the first user of the TESLA mark in China, the court decision seems right because his apparent high asking price for the mark signals bad faith on his part and that his use may not have been bona fide.
This decision bodes well for American and other non-Chinese companies who may need to protect and enforce their intellectual property rights against local competitors in China.
The highest profile cleantech IP dispute in China is the trade secrets and copyright case between American Superconductor and Chinese turbine manufacturer Sinovel, which made it all the way to, and is (as far as I know) still pending in, the Chinese Supreme Court.
Eric Lane is a patent and trademark attorney and the Principal at Green Patent Law in San Diego and the author of Green Patent Blog. Mr. Lane can be reached at (619) 818-6043 and at elane@greenpatentlaw.com.
