Highlights:This article introduces the case initiated by McDonald’s to protect its trademark right against malicious imitation and the related laws and regulations in China, also the legal suggestions from Bridge IP Commentary to McDonald’s in the case that to protect its right basing on the general vocabulary defined in the Trademark Law and the copyright of its trademark.
Recently, the McDonald’s (NYSE: MCD) administrative litigation against the imitation of its trademark by a Beijing company attracts the media’sattention. Several years ago, the trademark “wonderful and its graph” (hereinafter referred to trademark “W”)was registered by the company in the State Administration of Industry and Commerce, and the registered ranges include restaurant, café, research and development, clothing design and so on. On finding the trade mark and the judgment of similarity with its “M”, McDonald’s then filed an opposition against the trademark to the Trademark Review and Adjudication Board(hereinafter referred to the Trademark Board) under the State Administration of Industry and Commerce for re-examination. The Trademark Board finally decides to cancel the registration of the trademark “W” in the field of restaurant, café, cocktail party service, hotel, bar, teahouse service, however, while to maintain the registration in clothing design and package design. Therefore, MacDonald filed an administrative litigation to the Beijing First Intermediate People’s Court to cancel the decision of the Trademark Board.
Bridge IP Commentary has closely follow the case, and here is our analysis after study on the case and the trademark application:
I. It’s already affirmed by the Trademark Board of the similarity between “W” and McDonald’s “M”
McDonald’s claim was partly supported in the aforesaid decision of the Trademark Board to cancel the trademark “W” in Class 43 of McDonald’s main business, which means the Trademark Board has affirmed that the trademark “W” will cause confusion with the MacDonald’s trademark “M” and the similarity will be constituted.
II. According to the Trademark Law, it is difficult to cancel the trademark “W” in Class 45 on MacDonald’s claim of “similarity”
According to the Trademark Board’s decision, it thinks that MacDonald hasn’t provided sufficient evidences to prove the trademark “M” as a “well-known trademark”, which only can be regarded as a “noted trademark”. It shouldn’t be difficult for the McDonald’s, as an internationally famous fast food enterprise, to provide evidences to make the trademark “M” verified as a well-known trademark, even though, Bridge IP Commentary thinks, it is difficult for McDonald’s to win in the litigation for the reasons as follows:
The trademark “W” was applied in Class 43 and Class 42 in 2001, and was granted the registration by the Trademark Office in China. However, according to the investigation of Bridge IP Commentary, the trademark applied by McDonald’s in China can be dated back to 2003. In other words, when the trademark “W” was applied for registration in 2001, the trademark “M” could only be an “unregistered well-known trademark”.
The Article 13 of the Trademark Law provides that Where a trademark in respect of which the application for registration is filed for use for identical or similar goods is a reproduction, imitation or translation of another person’s trademark not registered in China and likely to cause confusion, it shall be rejected for registration and prohibited from use. Therefore, the “unregistered well-known trademark” can be protected only in its well-known class. So in China, McDonald’s intention to cancel the trademark “W” in the field of clothing design and package design has no legal ground.
III. How can McDonald’s Prohibit the Use of the Trademark “W”?
McDonald’s previous application to the cancellation was based on the similarity between the trademarks. Instead, Bridge IP Commentary thinks there are other reasons which can achieve such purpose:
(1) To claim the whole trademark “W” belongs to general vocabulary that can’t be applied as a trademark.
The main body of the trademark “W” is an English letter, but the whole is the vocabulary “wonderful” that means excellent, which allegedly constitutes “those simply directly indicating the quality” as provided in the Trademark Law, therefore, based on this reason, any entity including the McDonald’s can filed a cancellation procedure.
(2) To claim the trademark “W” infringes the copyright of the trademark “M”
The trademark “M” of McDonald’s isn’t purely an English letter “M”, its color, radian and scale are all designed and can be regarded as “Work”. In view of the appearance, the trademark “W” only rotates the trademark “M”, but hasn’t changed the radian, scale and other designs. Therefore McDonald’s can claim that the trademark “W” has infringed the copyright of the trademark “M”, and bring cancellation procedure according to Article 31 of the Trademark Law that the trademark shall not damage the existing rights of others obtained by priority”, also can directly file a lawsuit to the People’s Court of the place where the applicant of the trademark “W” locates according to the Article 1 of the Regulations on the Several Questions Concerning the Trial of Civil Cases about the Conflicts between the Registered Trademark, the Enterprises’ names and the Prior Rights.
Copyright reserved by Mr. You Yunting
Founder & Editor-in-Chief of Bridge IP Commentary
Partner & Attorney-at-law of Shanghai DeBund Law Offices
Email: Bridge@chinaiplawyer.com, Tel: 8621-5213-4900,
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