A new case is currently being heard at the European Union Intellectual Property Office (EUIPO) between a Dutch and a Chinese company, both of which have chosen the name BAIDU. This conflict has led to a prolonged legal conflict, highlighting the challenges companies face when selecting the same trademark.
It is not uncommon for two companies to come up with the same idea for a trademark. As long as they don’t operate in the same industry or country, it is usually not a problem. There are several well-known examples of this phenomenon:
- ABBA: The music group ABBA and a manufacturer of canned fish.
- ECCO: ECCO for footwear and ECCO for canned fish.
- Ajax: AFC Ajax Amsterdam football club and a cleaning product.
As an advisor to companies on choosing new trademarks, I sometimes wonder why companies in very different industries choose the same name. Is it to take advantage of the goodwill associated with the older trademark? Or is it just a coincidence?
The current case at EUIPO between the Dutch and Chinese companies, both of which have chosen the name BAIDU, brings this question into focus. Both companies use the name as their company name and mark for their services, leading to an intense legal conflict.
The dispute about the BAIDU trademark in the EU
The Chinese company, Baidu Online Network Technology (Beijing) Co., Ltd, is the Chinese equivalent of GOOGLE and one of the world’s largest internet companies. Founded in 2000, the company started as a Chinese search engine but now also offers services ranging from artificial intelligence solutions and video streaming platforms to cloud services and more.
The logo for the Chinese company, Baidu Online Network Technology (Beijing) Co., Ltd
The logo for the Dutch company, BAIDU EUROPE B.V.
In Europe, the Dutch company, BAIDU EUROPE B.V., established in the 2000s, has since 2015 been offering services related to domain name searches, as well as solutions in mobile applications and database integrations. It is somewhat of a mystery why a Dutch IT company chose a Chinese name like BAIDU, which means “100 times” in Mandarin. A rather unexpected choice, if you ask me.
The Dutch company first applied for a trademark registration for BAIDU in December 2005 in the Netherlands. Today, along with their subsidiary, they own 15 trademark applications and registrations containing the word BAIDU in various EU countries and at EUIPO. On the other hand, the Chinese company has nearly 12 similar trademark applications and registrations in Europe containing the name BAIDU. The Dutch company has challenged 9 of these 12 trademark rights, citing their older trademark registrations. The oldest BAIDU application from the Chinese company in the EU is from October 2010 and is still under review due to opposition from the Dutch company.
This long-standing dispute over the right to the BAIDU trademark in Europe has been ongoing for many years and will probably continue for several years. Most recently, in January this year, the Dutch BAIDU company won a ruling that their older trademark registrations were valid. However, the dispute did not end there, as a case was brought before the EU Court in March this year, and a decision will be expected in 1-1½ years. This means that it will likely take another 3-4 years before it is decided which company will be entitled to the BAIDU trademark in the EU.
Investigate the market early on
This case clearly demonstrates the importance of being proactive in protecting trademarks in the right markets. An early market research can be a wise investment, because even if other companies have chosen the same name, the matter does not necessarily have to be resolved by an authority. The parties could, for example, enter into a licensing or cooperation agreement. Given the size of the Chinese company BAIDU, the matter could even be resolved through the acquisition of the competing company. However, unless both parties reconsider their strategies, the possibility of an amicable solution is likely off the table.
What the future holds for the two BAIDU companies remains uncertain. But one thing is clear: this case is an important reminder of the significance of trademark protection and the challenges that can arise when two parties have the same idea.
If you are considering registering your trademark and are unsure whether there is a risk of infringing another company’s trademark, you can contact us for an initial, non-binding consultation.
