(By You Yunting) Kellogg Company, an American multinational food manufacturing company, produces cereal and convenience foods, including cookies, crackers and fruit-flavored snacks. However, in China, someone tried to apply for “Kellogg” as a trademark under Class 41 for educational services. After discovering this, Kellogg Company filed an opposition, but suffered a setback at first in that both the TRAB and Beijing No.1 Intermediate People’s Court rejected its claim. After Kellogg Company appealed, Beijing Higher People’s Court supported its claims, on the ground that the disputed trademark infringed the prior enterprise name of Kellogg Company.
Introduction to the Case：
Appellant (Plaintiff at the first instance): Kellogg Company
Respondent (Defendant at the first instance): Trademark Review and Adjudication Board (the “TRAB”)
The third party: Beijing KeyLogic Consulting
Court of first instance: Beijing No.1 Intermediate People’s Court No.:(2012)一中知行初字第3349号
Court of second instance: Beijing Higher People’s Court No.: (2013)高行终字第617号
In October 2004, Beijing KeyLogic Consulting (note: its enterprise name in Chinese language is identical with the English transliteration of “Kellogg”) applied for a combination trademark consisting of “凯洛格 Kellogg & Company”and its pattern (hereinafter refer to the “disputed trademark”) under Class 41 for educational services. After the China Trademark Office (the “CTMO”) published its approval of registration of the disputed trademark, Kellogg Company filed an opposition, alleging that the disputed trademark constituted a similar trademark with its prior registered trademarks (hereinafter refers to the “reference trademark”), including “KELLOGG’S” trademark and “Kellogg’s” trademark, and infringed its prior right of its enterprise name. But such opposition was rejected by the TRAB. Afterward, Kellogg Company brought the case to the court.
The court of first instance heard the case and held the following:
- The disputed trademark was not similar with the reference trademark, on the ground that the approved use of the disputed trademark, i.e., educational services, had a variety of differences insuch respects as the consumers, function and sales channel in comparison with the approved use of the reference trademark, i.e., pastries and bread under Class 30.
- Kellogg Company failed to prove that its reference trademark had obtained a higher popularity and awareness before the date of registration for the disputed trademark. This prevented them from being unable to establish the reference trademark to be a famous trademark in China.
- The infringement on the right of prior enterprise name shall meet the requirement of possible damages to the registrant of the prior enterprise name. The approved use of the disputed trademark was different from that of Kellogg Company and thus is unlikely to produce confusion among the relevant public. Therefore, the court of first instance dismissed all the claims of Kellogg Company.
Being dissatisfied with the judgment of first instance, Kellogg Company appealed. The court of second instance determined in the following.
The evidence provided by Kellogg Company, including its company registration, financial reports, previous news and reports, contents of the Principles and Practice of Management Communication and its protection schemes in China, hadadequately proven that the enterprise name of Kellogg Company has been a famous enterprise with high popularity and brand awareness, and additionally, that its management systems had already been introduced as a successful case study in a relevant field.
Considering the enterprise name had already achieved high popularity and brand awareness, the protection to the enterprise name has been adequately strengthened and qualifies for trademark protection to be extended to the approved educational services of the disputed trademark. If the situation before the situation were to persist, the disputed trademark would likely lead the relevant public into thinking they are associated with each other and cause confusion.
Therefore, the court of second instance repealed the judgment of first instance and the ruling of the TRAB, and ordered the TRAB to remake a ruling.
There are two legal grounds for Kellogg Company to require the TRAB rejecting the application of Beijing KeyLogic Consulting.
1) Its reference trademark has already obtained substantial popularity and awareness in the field of food. The acceptance of registration on Class 41 for educational services is likely to cause trademark dilution, thus the reference trademark being deserved trademark cross-protection.
2) Kellogg Company has its exclusive right for its enterprise name, so that another’s registration as a trademark could possibly cause the conflicts of rights.
Of the two above legal grounds provided by Kellogg Company, the court decided to support the second basis but to reject the first basis. Article 31 of the Trademark Law stipulates that the trademark application shall not infringe upon another party’s prior existing rights. Pursuant to this article, the enterprise name of Kellogg Company would be earlier than that of the application of the disputed trademark.
When judging whether the registration of the disputed trademark would be likely to cause confusion among the relevant public and the extent of possible damages to Kellogg Company, Beijing No.1 Intermediate People’s Court and Beijing Higher People’s Court had a quite different view. Beijing No.1 Intermediate People’s Court decided the registration of the disputed trademark would not cause confusion by virtue of the different approved use of goods or services.On the contrary, Beijing Higher People’s Court adopted the evidences provided by Kellogg Company and determined that the its enterprise name, with high popularity and awareness, deserved trademark cross-protection extending to the field of educational services.
Upon the analysis of the two court’s attitudes, I believe that the vastly different judgments are the result of different inner convictions of the judges. In our experience, the final results depend on the persistence and emphasis of the parties to some extent. In a word, pursue litigation vigorously and never give up the enforcement of your legal rights.