In a final judgment in trademark infringement litigation, (2020) JING 73 MINCHU No. 921, the Beijing Intellectual Property Court decided that a well-known trademark is not universal and that recognizing the well-known status of a trademark does not mean that protection can be automatically extended to all 45 classes.
Various factors should determine the scope of cross-class protection of a well-known trademark, including the following:
- The distinctiveness and reputation of the well-known trademark;
- Overlapping of the relevant consumers;
- Similarity of the trademarks;
- The actual business status of the owner of the well-known trademark; and
- The reputation and extent of use/manner of the disputed trademark.
An essential criterion to assess is whether the registration and use of the disputed mark would result in dilution of the concrete and sole link between the well-known trademark and its owner or tarnishing of the goodwill attached to the mark on relevant products in the market.
In this case, the plaintiff was the rights holder of a well-known trademark 紫光, Reg. No. 1153279, registered for the goods "data processing apparatus; computers; computer software" in Class 9 (the cited mark) pronounced as ZI GUANG, meaning purple light, used on data processing devices (scanners).
Records show that the well-known status of the cited mark with official recognition could be traced back to 2002—long before 2007, when the defendant, Shenzhen Ziguang Lighting Company, commenced its lighting apparatus business by using the same mark—and later, re-recognized in 2013 and 2015.
Based upon that, among other claims, the plaintiff sued the defendant for trademark infringement and unfair competition for the alleged use of 紫光 (ZI GUANG), 深照紫光 (SHEN ZHAO ZI GUANG), 紫光照明 (ZI GUANG lighting) trademarks, etc., and the trade name 紫光, which is similar to the plaintiff's prior well-known/reputable mark, and asserted the likely dilution of the distinctiveness of its well-known cited mark.
While the court ruled that the defendant's use of the mark on certain products, that is, on "UV-ray disinfection lights," was infringement, it dismissed the plaintiff's claim for trade name infringement and well-known trademark infringement by finding that some goods of the two parties—data processors and lighting devices for industrial purposes (for which the defendant owns trademark registrations)—had distant and dissimilar sales channels and consumers. In other words, the court denied the plaintiff's claim for protection of its well-known trademark.
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