China: Can A Company Act Against A Trademark Similar To Its Prior President's Name?- Beijing Court Said YES

In a recent trademark administrative lawsuit, both Beijing Intellectual Property Court and Beijing Higher People's Court found in favor of Kweichow Moutai Group ("Moutai Group") vs. a registered trademark similar to the prior president's name of Moutai Group. The courts' decisions are significant in that they authoritatively confirm: where the prior president' name (or a similar name) of a company (already famous in the industry) is registered by a competitor as a trademark, the company may independently file a suit to claim its own economic benefit being damaged.

Case Summary:

Guizhou Moutai Town Guowei Alcohols (Group) Co., Ltd. ("Guowei") registered the trademark "JI GONG FANG in Chinese characters" (meaning JI's Workshop) Reg. No. 9162734 ("the disputed mark") on March 7, 2012, covering the goods "alcohol (drink), etc." in Class 33.

Moutai Group filed an invalidation application vs. the disputed mark before TRAB on October 24, 2013, claiming that Guowei infringed Mr. Keliang JI's personal name right (Mr. JI was the previous President and Chief Engineer of Moutai Group). On May 1, 2014, the Trademark Law was amended and came into force. Then, TRAB made a decision on December 3, 2014, dismissing the claims of Moutai Group, for Moutai Group is not considered a qualified applicant.

Moutai Group appealed to Beijing Intellectual Property Court. The court revoked the TRAB's decision and demanded TRAB to make a new one.

Unsatisfied with the court's decision, TRAB appealed to Beijing Higher People's Court, but the latter sustained the judgment of the first instance.

The Court's Reasoning:

The court made detailed analysis to conclude that the question whether the applicant is qualified shall be a procedural matter and thus the amended Trademark Law shall be applied to the case. The court holds that since Mr. JI has authorized Moutai Group to file an invalidation application vs. the disputed mark based on JI's right of personal name, Moutai Group is a qualified subject of the cancellation. Therefore, the TRAB incorrectly applied the law in making the decision.

In addition, the court holds that as Mr. Ji is famous in the alcohol industry, the benefits attached to the names "JI KE LIANG" or "JI GONG FANG" are closely related to the interest of Moutai Group (where Mr. JI used to work as a president and chief engineer). So Moutai Group is an interested party to the right of personal names "JI KE LIANG" and "JI GONG" (Mr. JI or Engineer JI). Guowei's registration of "JI GONG FANG" trademark would make the public wrongly believe that the goods bearing the disputed mark are from Mr. Ji or Moutai Group. In that way, the registration of the disputed mark should have infringed the economic benefits of Moutai Group.

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