(By Luo Yanjie) Abstract: Only if another trademark would “mislead the public and injure the interests of the registrant of a well-known trademark, the well-known trademark could obtain “across protection”. The court shall apply on leniency protective conditions of “injure the interests of the registrant of a well-known trademark” to cross-protection for well-known trademark.
Generally speaking, the well-known trademark can get the trademark cross protection, in particular, the “cross-category” does not mean that the well-known trademark can obtain only related categories’ protection , not all categories. A case in our today’s post is about a well-known trademark failure to get the cross protection sharing with readers as follows，
Introduction to the Case:
In April 2002, natural person Lee registered “潘婷 Pantene” (No. 3157693) trademark (the “opposed trademark”) on the Class 5 under the classification for “Medical nutrition, air freshener” and other projects. In November 2003, the Trademark Office published its preliminary review. Within publication period, Procter &Gamble (the “P&G”) made the objection based on its plagiarism and imitation of the famous trademark “潘婷 Pantene”, but it was dismissed by the Trademark Office. Later, P&G made an application for review to the Trademark Review and Adjudication Board, which was still rejected. Afterwards, P& G filed an administrative lawsuit.
Beijing No.1 Intermediate People’s Court thought that: Evidence submitted by P&G showed that its registration and use of “潘婷 Pantene” trademark on the commodities of “shampoo, hair conditioner and hair care preparations” actually had a long duration and a higher degree of awareness to the public. However, under the circumstance that the court held that the category of “Shampoo, hair conditioner and hair care preparations” and the “medical nutritionals, air fresheners” approved by the opposed trademark had an obvious difference in the functional use, production process and consumption area, the court the registration and use of the opposed trademark would not mislead the public and injure the P&G’s interests, so the court rejected P&G’s suit. Although P&G appealed, the second instance still upheld the first judgment.
I. A well-known trademark cannot be protected in all categories of trademark classification
Article 13 under the Trademark Law stipulates “a trademark that is applied for registration in non-identical or dissimilar goods shall not be registered and its use shall be prohibited, if it is a reproduction, an imitation or a translation, of a well-known mark which is registered in China, misleads the public, and the interests of the registrant of the well-known mark are likely to be damaged by such use.”
Article 13 is the legal basis for well-known trademark cross protection But according to legal provisions of laws and regulations, only if someone else’s trademark will mislead the public, and injure the interests of the registrant of the well-known mark by such use, the well-known trademark can get cross protection. In other words, even the “well-known trademark” cannot be protected in all categories.
II. The court shall apply on leniency protective conditions of “injure the interests of the registrant of a well-known trademark” to cross-protection for well-known trademark.
According to the regulations of “ Interpretation of the Supreme People’s Court on Several Issues Concerning the Application of Law to the Trial of Cases of Civil Disputes over the Protection of Famous Trademark”, whether a famous trademark is able to obtain cross protection should consider the following factors: the distinctiveness of the well-known trademark, the famous trademark’s awareness of the relevant public in using the goods with the opposed trademark or company name, the connection between the goods with well-known trademarks and the goods with the opposed trademarks or company name; and other factors, etc.
In this case, the reason why the court rejected P&G’s litigation was that the application category of the opposed trademark was irrelevant to the “潘婷 Pantene” trademark’s classification of “Shampoo”, thus a huge difference. But the author thought that, whether there was a connection between the two commodities was a more subjective process. The general’s trademark can be judged according to the Trademarks Classification, but as for the cross protection for the well-known trademark, without absolute standards of judgment, the court should not be too harsh to provide cross protection for a well-known trademark.
Especially for some brands of everyday items used by common people, due to a huge range of customers and even to a degree that nobody did not know the brands, the cross protection for above mentioned brands shall be strictly determined to prevent another person from malicious trademark registration. Therefore, in this case, when“潘婷 Pantene” as a famous commodity of every items, was registered by others under the same daily commodities of “medical nutritionals, air fresheners”, in our opinion, the court shall prohibited such registration instead of rejecting the plaintiff’s claim only because of “a huge difference of trademark registration ”.