The "Fish Selling Bro" and How to Lose Control of your Trademark in 2 Easy Steps
That® Story of Wang Lei and an Enterprising Squatter who Trade Mark-ed Wang Lei’s “Fish Selling Bro” Logo in China. Now this Singaporean Brand Owner Can’t Use His Own Trade Mark There.
This is the cautionary tale of Mr Wang Lei – a man who expended blood, sweat and tears to build a brand, only to have it usurped in China due to his failure to act in a timely manner. It is a tale about the dangers of procrastinating.
Mr Wang Lei is a Singaporean singer-actor and, in the midst of the COVID-19 pandemic, he started a business live streaming on Facebook to sell fish, lobsters, and other seafood. He named this business "Mai Yu Ge" (Mandarin for "Fish Selling Bro").
Wang's live streams not only drew the attention of up to 62,000 viewers on Facebook, they were also uploaded to Chinese websites like Weibo, Douyin, and Bilibili, going viral not just in the local market but also in the Chinese market.
Wang's success landed him lucrative endorsement deals, with his signature spiked hair and bandana featured in all of his videos. Unsurprisingly, Wang's business logo also features this signature look, with his comic caricature holding on to seafood behind prominent yellow and black Chinese characters spelling out "Mai Yu Ge".
"Mai Yu Ge" drew fans from all over the world, as Wang expanded his business and started selling merchandise featuring his logo in addition to selling seafood. Unfortunately, it was not all sunshine and roses for Wang. Wang eventually got around to registering a trade mark and he attempted to do so in various jurisdictions such as Singapore, Malaysia, Taiwan and China. However, he was shocked to find that his trade mark registration failed in China because the logo that he designed had already been registered by someone else.
Even though Wang purportedly hired a Chinese lawyer and appealed against this decision, he was ultimately unsuccessful and was forced to recall the goods he had shipped to China or risk them being confiscated as counterfeits.
How did this happen? How did it come to pass that Wang, the originator of the logo, is somehow unable to sell his products under the said logo in China?
We will elaborate further below but here are the 2 steps that Wang took (or did not take) that resulted in his troubles:
1) He launched his goods/services in an overseas market (China)
2) He omitted to register his trade mark in the said foreign jurisdiction.
TM Squatting in China
Unfortunately, this is due to the phenomenon popularly known as “Trade Mark Squatting”. In certain legal systems, such as the one in China, trade marks are granted on a first-to-file basis. This leads to a situation where opportunistic people actively seek out trade marks registrations for brands that they themselves did not develop. In doing so, they typically look for a free ride – to piggyback on the efforts of others and to reap benefits that they did not earn. This seems to be what occurred in Wang Lei’s case – someone else registered his logo earlier than he did and that is all it took for Wang, the “rightful” owner of the logo, to be denied the benefits of his investment in developing the brand.
While there may be other avenues of redress for this problem in China, these are limited, time consuming and costly. For example, it might be possible to invalidate or cancel the squatter’s registration if one can prove bad faith on the part of the registrant of a trade mark, such as proving that one has existing business in China prior to the “bad faith” registration. However, it is not so easy to prove this if one hasn’t yet entered the market in China. This places a heavy burden of proof on the “rightful owner” to sustain the bad faith allegation. Discharging this burden of proof will likely be tedious and costly.
Conclusion - Take Pre-emptive Action to Protect your Brand Locally and Overseas
Mr Wang’s situation is a grave injustice, but serves as a lesson for other business owners – please don’t hold off on registering your trade marks overseas. As long as there is a possibility that you will enter an overseas market, you should consider registering your mark there. This way, if (or when) you choose to expand your business to other jurisdictions, you will have the rights to your business's trade mark(s) and need not worry about a "free-loader" taking advantage of you and your brand's reputation that you have so painstakingly built.
Having dealt with cases such as this, we can assure you that the cost of registering a trade mark overseas is minimal compared with the cost of fighting an overseas legal battle over your trade mark.
Even if you do not intend to expand your business overseas, you should definitely consider registering your trade mark in Singapore. Find out more about that: https://www.that.legal/blog/3-key-reasons-to-register-your-trade-mark
If Wang's predicament has you worrying about your business and its future, we are here to help you in protecting your brand – in Singapore and beyond. Don't wait until it's too late and open yourself up to the possibility of regret.
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