(By Luo Yanjie) Henan Dazhong Paint (Hongkong) Co., Ltd (“Paint Company”), a manufacturer of varnish and paint, recently applied for the trademark “多美滋,” which attracted the dissatisfaction of the International Nutrition Company (“INC”), a globally known Danish infant and children’s nutrition company and the trademark holder of “多美滋DUMEX.” As a result, INC filed an objection to the State Trademark Office (“Office”), but the objection and objection review were both refused by the Office and the Trademark Review and Adjudication Board (“TRAB”). After that, INC appealed TRAB’s decision to the Beijing No.1 Intermediate People’s Court. Recently, the Court made its decision and found that “the adoption of the trademark on the paint product could influence the interests of the plaintiff.” Based on this decision, the Court revoked TRAB’s decision to approve the registration of the trademark “多美滋” for paint.

This is a model case for the trans-class protection of well-known trademarks. As a food trademark with a global reputation, there is no question that “多美滋DUMEX” has well-known trademark status. In fact, reports have stated that many well-known trademarks that have recently been approved by TRAB have been revoked by the courts, including “太太乐” and “Jeep.” So, why did the Office and TRAB not grant well-known trademark trans-class protection in the above cases? And, how should the concept of trans-class protection of well-known trademarks be understood and applied? Please read today’s post for our answers.

I. What is trans-class protection of a well-known trademark?

As stipulated in Article 13 of the Trademark Law:

“Where a trademark in respect of which the application for registration is filed for use for non-identical or dissimilar goods is a reproduction, imitation, or translation of the well-known mark of another person that has been registered in China, misleads the pub1ic and is likely to create prejudice to the interests of the well-known mark registrant, it shall be rejected for registration and prohibited from use.”

That is the legal basis of trans-class protection of well-known trademarks. But, it must be noted that, according to this article, trans-class protection can only be obtained when the later trademark is a copy, imitation, or translation of the earlier registered well-known trademark, and when the later applied trademark also “misleads the pub1ic and is likely to create prejudice to the interests of the well-known mark registrant.” In other words, even if a well-known trademark has already been registered, that does not mean that it will be able to obtain protection in all classes.

Moreover, since the trademark has already earned well-known status, it necessarily already has wide recognition in society. So, when others register similar or identical trademarks in other classes, the application will normally be suspected of being “a reproduction, imitation or translation.” To judge from the legal prospective in real practice, it is not easy to prove whether other registrations reproduce, imitate, or translate a registered well-known trademark. Therefore, deciding whether a well-known trademark can be protected in a specific class normally depends on whether or not the later registration for a similar or identical trademark will “mislead the pub1ic and is likely to create prejudice to the interests of the well-known mark registrant.” The remainder of this post will discuss this issue in detail.

II. How to judge “to create prejudice to the interests of the well-known mark registrant”?

According to the Interpretation on Several Issues Concerning Application of Law in Civil Trials on Well-known Trademarks by the Supreme People’s Court, the following elements shall be considered in deciding whether a well-known trademark receives trans-class protection: the distinctiveness of the well-known trademark, the level of public recognition of the well-known trademark in the field where the disputed trademark or trade name is being used, the connection between the product using the well-known trademark and the product using the disputed trademark or trade name, and other elements. It can be concluded from the above regulations that existing laws and regulations have not set a specific standard for decision. In practice, however, courts typically will examine whether or not the following circumstances are present:

1. The possibility of negative influence on the value of the well-known trademark

This situation normally occurs when the class of the later applicant’s trademark would have a definite negative influence on the earlier applicant for the well-known trademark. For example, if the trademark “伊利” were registered for on sanitary ware, it would necessarily result in a negative influence on the well-know trademark of the same name for dairy products, for sanitary ware would negatively impact consumers’ appetites. To return to the “多美滋” trademark in the case above, once the trademark “多美滋” is used for paint products, the association would also create an appetite spoiling association for consumers, which would harm the well-known trademark owner’s interests.

2. The possibility that the later registrant will receive unlawful gains

In this situation, although the later applicant has not caused any direct damages to the well-known trademark holder, it is still suspected to be free-riding on the mark to improve its own reputation. For example, using “Cartier” for ceramic tile; although there is no connection between tiles and the jewelry with the same name, the name could imply to consumers that the tile product is authoritative and luxurious. Eventually, this kind of behavior would weaken the distinctiveness of the well-known trademark and harm the interests of the trademark owner.

Tomorrow’s post will conclude this discussion by outlining situations where trans-class protection cannot be granted to a well-known trademark.

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