After zooming into China with a slick publicity campaign earlier this year, electric car superstar Tesla (Nasdaq: TSLA) has run into a major new roadblock in one of its most promising markets over a trademark dispute. Tesla thought it had settled a matter that jumped into the headlines last summer as it was preparing to formally move into China. But apparently the trademark squatter who purchased the Tesla names in English and Chinese wasn’t satisfied, and has formally sued the company. Based on past cases, this one could be costly for Tesla, forcing it to pay tens or even hundreds of millions of dollars if it wants to reclaim its name in China.
I’ve previously said that China needs to be more business friendly in this kind of dispute, where opportunistic buyers often hold big corporations hostage. But China seems determined to uphold its laws that often seem to favor those opportunists, not only hurting big foreign names like Tesla but also harming homegrown companies. This kind of opportunism is in the same spirit as many of the less ethical business practices that are common in China landscape, ultimately slowing or stalling the development of new industries.
Tesla thought it had settled its trademark dispute with businessman Zhan Baosheng, who purchased the company’s trademarks in both English and Chinese back in 2006. (previous post) But Zhan didn’t see things that way, and has now sued Tesla for trademark infringement, demanding the company stop using the trademarks in China and pay him 23.9 million yuan ($4 million) in damages. Zhan is also demanding that Tesla cease all marketing activities, shut down its showrooms and also stop development of its national network of charging stations.
The Beijing court has agreed to hear the case on August 5. That means it believes that Zhan may have some legal grounds for his actions, since Chinese courts typically refuse to hear such cases if they believe the plaintiff has no chance of winning. In this instance it’s hard to know what exactly happened, as neither Tesla nor Zhan is publicly commenting about the case. Tesla had said early this year that the matter was settled and delivered its first cars in China in April in a series of high-profile appearances by the company’s charismatic founder Elon Musk. (previous post)
The case looks quite similar to another high-profile dispute in 2012 involving Apple (Nasdaq: AAPL) and its iPad name. In that case, a bankrupt firm named Proview bought the name a decade earlier for a product that never found a market and ceased manufacturing long before the rise of Apple’s popular tablet PCs. Apple even thought it had legally purchased the name from Proview, but a technical glitch meant the transfer was never completed. Rather than honor the spirit of its earlier agreement to sell the name, Proview took the matter to court and Apple was ultimately forced to pay $60 million for the trademark.
The businessman in this latest case probably won’t stop Tesla’s drive into China, but he could easily slow things down with this major distraction. One element in Tesla’s favor is Beijing’s strong desire to promote electric cars as it looks to clean up the nation’s polluted air. There was no such element in the Apple story. To the contrary, Apple may have even gotten harsher treatment than most other companies due to its perception as arrogant by some in Beijing.
While politics could help in this situation, Beijing leaders in the past have shown a surprising lack of willingness to get involved such matters where opportunists attempt to manipulate the law. That’s certainly a desirable attitude in a country where the legal system is mature and independent. But China’s courts don’t really posses either of those qualities, and are likely to end up causing Tesla to lose valuable time and forcing it to pay a hefty settlement in its drive into China.
Bottom line: Tesla’s trademark infringement dispute is likely to delay the company’s drive into China by up to half a year, and cost it tens or even hundreds of millions of dollars to settle.
Doug Young has lived and worked in China for 15 years, much of that as a journalist for Reuters writing about Chinese companies. He currently lives in Shanghai where he teaches financial journalism at Fudan University. He writes daily on his blog, Young´s China Business Blog, commenting on the latest developments at Chinese companies listed in the US, China and Hong Kong. He is also author of a new book about the media in China, The Party Line: How The Media Dictates Public Opinion in Modern China.