China: Five recent typical trademark cases in China

Last Updated: 3 January 2014
  1. MAZDA Motor Corporation. MAZDA Motor Corporation is the trademark owner of "MAZDA" and "马自达 (MAZDA in Chinese)" that are famous for automobile manufacture. A Chinese individual applied for registration of a mark "MAZDA马自达" for "glasses(optics)" in Class 9. MAZDA Motor Corporation failed both in the proceedings with the CTMO and TRAB on the grounds that though Mazda's marks enjoy high fame in China before the filing date of the opposed mark, the goods "glasses (optics)" covered by the opposed mark are far from automobiles for which Mazda's marks are famous and thus the co-existence of the marks will not mislead the public and damage the interests of MAZDA Motor Corporation. MAZDA Motor Corporation filed a court action supplying with new evidence to prove its well-known status and the relevancy between glasses and automobiles. The court holds that the evidence submitted by Mazda in the review stage is sufficient to prove the well-known status of its mark and, although glasses and automobiles are different products, the target consumers of these two kinds of goods are both general public and the drivers usually use glasses for vision correction or protection against the sun. Based on the above, the court ruled to cancel the TRAB's decision and ordered it to make a new decision.

At the same time, MAZDA also won a similar case against a Chinese company's application for registration of a mark "MAZDA" for "blinker lights and neon lights" in Class 9 based on the well-known trademark claim. Specifically, the court holds that although "blinker lights, neon lights" and automobiles are different products, the blinkers lights are important parts of automobiles and are even considered as the "eyes" of the automobiles. Moreover, "neon lights and blinkers" fall into the same subclass of "signal instruments" as "traffic lights (signal device); warning triangles and signal lights", which are closely related to transportation industry while automobiles are one of the most important means of transport.

  1. TOM FORD. A Chinese individual filed an application for mark containing TOM FORD in class 9 and the client filed an opposition against the mark based on the grounds: 1) the opposed mark is similar to the opponent's prior marks protected in other classes covering fashion products; 2) the mark is a preemptive filing of the opponent's prior used mark of high reputation; 3) the opposed mark infringes the opponent's right to his personal name; and 4) the opposed mark was filed in bad faith and will cause unhealthy influence on the society. The opponents failed before the Trademark Office and the Trademark Review and Adjudication Board and then filed an appeal before the Court. . Since TOM FORD trademark was not extensively used in China prior to the filing date of the opposed mark and the goods covered by the opposed mark and the opponent's marks are in different classes, the Trademark Office and the TRAB did not recognize any ground of the opposition while the first instance court overturns the TRAB's decision by recognizing the opponent's right to his personal name TOM FORD. The right to name of a foreign individual is recognized in this case although the name had not yet been used by the opponent in connection with the goods covered by the opposed mark.
  2. J Sainsbury plc. We represented J Sainsbury plc, commonly known as Sainsbury's, the second largest chain of supermarkets in the UK, in an opposition against a Chinese application for registration of the trade mark "JSAINSBURY" in Class 35 filed by a Chinese company notorious for its numerous bad faith applications for trademarks belonging to others. Although we failed in the opposition proceedings before the China Trademark Office (CTMO), we succeeded in the review before the Trademark Review and Adjudication Board (TRAB), holding that Sainsbury's trade name had become known in public prior to the filing date of the opposed mark, which is confusingly similar to the trade name in letter and reading. The registration and use of the opposed mark is likely to mislead the public as to the origin of services and thus will infringe upon the opponent's prior trade name right. Moreover, there are precedents showing that the opposed party preemptively applied for registration of hundreds of trademarks that are copies, imitations or translations of others' famous marks, which will not only mislead the public as to the source of goods but also disturb the market order of fair competition, violate the principle of honesty and credibility, and cause adverse social impacts.
  3. Ernest Borel (Far East) Company Limited. Ernest Borel (Far East) Company Limited is the trademark owner of "Ernest Borel and Design" that is famous for watches. A Chinese company Yu Huatong Investment Co., Ltd. applied for registration of an almost identical mark for "swimming suits and neckties, etc." in Class 25. Ernest Borel failed both in the proceedings with the CTMO and TRAB on the grounds that the evidence provided was not sufficient to establish "ERNEST BOREL" as a well-known mark on watches in Class 14 before the application of the opposed mark, nor to prove the trade name had become known in respect of the products in Class 25. Ernest Borel filed a court action supplying with a large amount of new evidence to prove its well-known status, which was recognized by the court. Although the goods fall into different classes, they both belong to fashion products, and the registration and use of the opposed mark is likely to mislead the public and damage the interests of Ernest Borel as the registrant of the well-known mark. The court ruled to cancel the TRAB's decision and ordered to make a new decision. The judgment has come into force.
  4. China UnionPay Co. Ltd., the famous credit card service provider, is the trademark owner of " ". A Chinese company Wenzhou Gelai International Trading Co. Ltd. applied for registration of a mark " " in class 36, which is confusingly similar to UnionPay's prior registered mark. During the opposition proceedings, we have submitted a large volume of evidence proving the well-known status of UnionPay's mark and the high relatedness of the services in the field of financing. The Trademark Office decides that application of the opposed mark has constituted an infringement of the client's well-known trademark and its registration will damage the client's legal interest. In another case, a Chinese company Dongguan Longguang Green Lighting Co., Ltd. applied for registration of a mark " " in class 11, which is confusingly similar to UnionPay's famous " " mark. The CTMO made the decision in favor of UnionPay confirming the similarity between a trademark in a combination form and a device mark, given the brand popularity of UnionPay and likelihood of confusion. Both decisions have come into force.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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