Believing the registration of No. 7185184 "旁氏" (note: Chinese characters same with Pond's) trademark (the opposed trademark) by Jiangsu Yancheng Youshang Advertising Company damaging the interests of its mark Pond's, the Netherlands-based Unilever sought justice in Chinese authorities and courts that would eventually last eight years.
The Beijing High People's Court recently made a final judgment determining that No.529659 trademark "旁氏" (the reference mark owned by Unilever) qualified as a well- known trademark, rejecting the appeal from the Trademark Review and Adjudication Board (TRAB) and revoking its reexamination decision approving the opposed trademark for registration. Now the TRAB has to take a de novo look at the case.
The opposed trademark was filed by Youshang Advertising on February 1, 2009, designating to be used on Class 32 goods including water and drinks. After preliminary examination, the Trademark Office (TMO) published the opposed trademark on April 20, 2010. Unilever filed an opposition request to the TMO on July 22, 2010, alleging that the reference mark had qualified as a well- known mark for its performance in cosmetics for facial use in China and the registration and use of the opposed trademark would mislead the public and dilute the distinction of the reference mark.
According to file, the reference trademark was approved for registration in September 1990 by TMO, certified to be used on Class 3 goods including cosmetics for facial use.
On July 3, 2012, the TMO rejected the registration of the opposed trademark. The disgruntled Youshang Advertising lodged a reexamination request to the TRAB on August 17 of the same year. On March 13, 2014, the
TRAB made a reexamination decision that the mineral water and other goods on which the opposed trademark was designated for use differed greatly from those of the products such as cosmetics for facial use on which the reference trademark was famous and the registration of the opposed trademark would not easily cause confusion or misidentification among the relevant public. Accordingly, the TRAB approved the registration of the opposed trademark.
Unilever then brought the proceedings to Beijing No. 1 Intermediate People's Court. After hearing, the court held that the reference mark constituted a well-known mark based on its use on goods such as cosmetics for facial use and if the opposed trademark was used on mineral water as a registered trademark, it would make the public believe that there was a specific association between the above- mentioned products and Unilever, thus damaging the company's rights and interests. Therefore, the court made a first-instance judgment on September 26, 2017, revoking the reexamination decision by the TRAB and asked it to make a de novo decision.
The TRAB then appealed to Beijing High People's Court.
Beijing High held that the trademark "旁氏" had been used and promoted in China for many years since 1994. Its wide use and the track record of being protected for multiple times were enough to prove that it had constituted a well-known trademark on products such as cosmetics for facial use. Beijing High upheld the first-instance judgment on the same ground.
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