China: Application Of The Doctrine Of Stare Decisis To Cases Of Well-Known Trademark Recognition

Last Updated: 22 June 2017
Article by Gang Hu

Broad Protection should be provided for the Market Reputation of the Well-Known Automobile Brand

[Case]

(2015) Jing Zhi Xing Chu Zi No. 5098 Case of Administrative Dispute over Trademark Invalidity Announcement between the Plaintiff ×× Automobile Co., Ltd. and the Defendant the Trademark Review and Adjudication Board of the State Administration for Industry and Commerce of the People's Republic of China ("TRAB"), and the Third Party Wuyuan County Yongwang Industry and Trade Co., Ltd.

[Brief Introduction to the Case]

By the reason that its priorly registered trademark ("Cited Trademark") had relatively high popularity and influential force, and constituted a well-known trademark after long-term broad use and marketing in China, the Plaintiff XX Automobile Co., Ltd. ("the Plaintiff") complained that the No. 9923074 Trademark ("Opposed Trademark") registered by the Third Party constituted the reproduction and imitation of the Plaintiff's well-known trademark, and the registration and use of the Opposed Trademark would easily misguide the public and damage the Plaintiff's benefits, so the Plaintiff requested the TRAB to cancel the registration of the Opposed Trademark. The TRAB considered that the Class 19 goods like firebrick, etc. on which the Opposed Trademark was approved to use and the Class 12 goods like vehicles, etc. on which the Opposed Trademark was approved to use and the Class 12 goods like vehicles, etc. on which the Cited Trademark was approved to use had distinctive differences in terms of function, use, consumption object, sales channel, etc. Therefore, the Opposed Trademark would not misguide the public or damage the Plaintiff's lawful rights and interests, and it did not constitute the reproduction and imitation of the Plaintiff's Cited Trademark, so the TRAB maintained the registration of the Opposed Trademark. The Plaintiff was not satisfied, and lodged a complaint to Beijing Intellectual Property Court.

In the court hearing, the Plaintiff cited two prior legal precedents in which the recognition of well-known trademarks was involved, but different judgment conclusions were drawn, and considered that: 1) The three basic conditions for application of the provisions of Article 13.2 of the Trademark Law to administrative cases of trademark right authorization and confirmation are that, prior Cited Trademark is a well-known trademark registered in China; the Opposed Trademark constitutes the reproduction, imitation or translation of this well-known trademark; the application for registration of the Opposed Trademark would easily induce consumers' confusion or misguide the public, and thus damage the benefits of the objection applicant. 2) All the above-mentioned conditions are necessary and insufficient conditions, and the lack of any condition could deny the application of this article. 3) The well-known degree of a trademark would affect the recognition of other conditions, so when it's impossible to surely deny other conditions, we shall firstly judge whether the trademark has reached well-known state first.

The Court supported the Plaintiff's above-mentioned reasons for dispute after trial, recognized that the Plaintiff's priorly registered trademark constituted a well-known trademark, and hereby requested the Defendant to make a new decision on the request for trademark invalidity announcement and invalidate the registration of the Third Party's No. 9923074 Trademark under Class 19 goods like firebrick, etc.

[Abbreviature of Adjudication]

1. To judge whether an opposed trademark constitutes the circumstances regulated in Article 13.2 of the Trademark Law 2001, we shall firstly ascertain whether the trademark requesting protection has reached well-known state in principle. Where the opposed trademark does not obviously constitute the reproduction, imitation or translation of the cited trademark, or it's available to confirm from the factors such as the relevance degree of goods that the result that the opposed trademark is approved to register will not induce the result of misguiding the public and possibly damaging the benefits of the cited trademark right holder, then it will be unnecessary to examine and recognize whether the cited trademark constitutes a well-known trademark.

2. The Plaintiff's Cited Trademark constitutes a well-known trademark. The registration of the Opposed Trademark uses the market reputation of the well-known trademark, occupies for free the benefits and achievements of the popularity obtained by the Plaintiff after great effects and plentiful investments, weakens the inherent connection between the Cited Trademark and the goods provided by the Plaintiff in the mind of relevant public, thus weakens the distinctiveness of the well-known trademark and damages the benefits of the Plaintiff as the well-known trademark right holder. Therefore, the application for registration of the Opposed Trademark violates the provisions of Article 13.2 of the Trademark Law 2001.

This case was appraised and elected by Beijing Intellectual Property Court to be one of typical cases at the 2nd anniversary for its foundation. Beijing Intellectual Property Court considered that, the typical significance of this case rested with: the recognition sequence of the composition elements of the well-known trademark at issue, and the issue concerning the cross-class protection scope of the well-known trademark. The Plaintiff carried out analysis by citing two judgments giving different conclusions, namely (2015) Zhi Xing Chu Zi No. 112 Administrative Judgment of the Supreme People's Court, and (2011) Gao Xing Zhong Zi No. 630 Administrative Judgment of Beijing Higher People's Court. Under the circumstance that there was no definite regulation in law, and the two effective judgments of the superior courts were not completely the same, Beijing Intellectual Property Court extracted the rules for the well-known trademark recognition sequence and applicable standards from the two prior cases, and effectively protected the lawful rights and interests of the owner of the well-known trademark having higher well-known degree.

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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