2014 Typical trademark cases in China

China IP,[Trademark]

1. P&G
Procter & Gamble Co. (P&G) sued Beijing Royal Vidal Sassoon Beauty Hair School (Sassoon School) for trademark infringement of its registered trademarks, and unfair competition. In April 2014, Beijing Higher People’s Court rendered a final judgment, issuing an injunction against Sassoon School for infringing upon the exclusive trademark rights of P&G, and for unfair competition, ordering a statement on relevant newspapers to eliminate ill effects, cease and desist of use of “Sassoon,” and awarded damages of 500,000 yuan with reasonable to P&G. 
P&G contended at trial that it has exclusive rights to use in China the registered trademarks of “沙宣” (Chinese transliteration of SASSOON), “VIDAL SASSOON” and “沙宣美发” (Chinese transliteration of “Sassoon Hair Salon”); that these marks have acquired strong distinctiveness and are well recognized among the relevant public thanks to its sustained publicity and use, that Sassoon School has used, without permission, in its facilities, ancillary supplies and promotions, signs and texts of “Royal Sassoon in Chinese characters,” “ROYAL VIDAL SASSOON BEAUTY HAIR SCHOOL” and “VIDAL SASSOON”; that these marks are substantially similar to its registered trademarks, causing public confusion and infringing its exclusive rights of use; that Sassoon School is a market competitor of P&G, and the registration and use in daily operations of the well-known trademark “Sassoon School,” which P&G has the exclusive trademark right, in the school name, has constituted an act of unfair competition; and therefore Sassoon School has made false propaganda through its domain name on its website “huangjiashaxuan.com” and other promotional materials, misleading consumers and harming its legitimate interests.
Unsatisfied with the trial court decision, Sassoon School appealed to Beijing Higher People’s Court, which rejected the appeal, holding that there was no sufficient ground to support the appeal. Although its business name is approved for registration, the market player should not harm the market reputation of others under the disguise of a legitimate form and shall not confuse its business name with registered trademarks of others. Sassoon School frequently used “Royal Sassoon” and other signs in its services, promotional materials and websites, thus having infringed the exclusive rights of P&G to use the registered trademarks, harmed the interests of P&G and constituted an act of unfair competition. 
Accordingly, the court sustained the trial court’s decision. 
2. Columbia
In August 2014, Guangzhou Intermediate People’s Court delivered a final decision in a trademark case brought by Columbia Sportswear Company (Columbia Company) against an individual surnamed Huang, a footwear retailer in Haizhu District of Guangzhou, Guangdong Province. The ruling dismissed the appeal of Huang and enjoined Huang from infringing use of the registered trademarks of Columbia Company on footwear products with assessment of damages and fees in the amount of 12,000 yuan. 
Huang is an individual doing business of footwear products in Haizhu District of Guangzhou. Columbia Company showed by evidence certified by Beijing Fangzheng Notary Public Office in October 2013 that the shoes for sale in Huang’s retailing store were not authorized products. 
The court found that Columbia Company has acquired legitimate exclusive rights to use trademarks No.1236702, No.G866360 and No.5288009 which are still in force, entitled to legal protection. The exclusive rights are limited to the trademarks and designated goods approved. The above-mentioned trademarks have gained significantly high reputation among consumers through long-term use and extensive publicity. 
Guangzhou Haizhu District People’s Court held that the allegedly infringing gym shoes were all marked with “Columbia” on sides, center of uppers and soles, a sign similar to or identical with trademarks No.1236702, No.G866360 and No.5288009. The products have not been authorized for production by Colombia Company and are likely to cause public misunderstanding as to their origin. Therefore, they are infringing products and Huang shall cease infringement and compensate. 
Huang was dissatisfied and appealed to Guangzhou Intermediate People’s Court, claiming that the firstinstance court failed to present clearly ascertained facts and sufficient evidence to prove infringement of the shoes for sale, and failed to compare the shoes for sale with shoes produced or authorized for production by Columbia Company, and uses of trademarks from both sides. Therefore, in the absence of authentication of any materials and discovery in the court, there will be evidently no supporting evidence to prove the infringement of the products. 
Columbia Company argued that the first-instance court has clearly ascertained facts and correctly applied the law. Therefore, it requested the court to uphold the firstinstance ruling. 
Guangzhou Intermediate People’s Court held that Huang’s appeal is groundless and shall not be supported, and that the first-instance ruling has clearly ascertained facts, applied the law, and shall be upheld. Therefore, the court dismissed the appeal and upheld the first-instance ruling.
3. Angry Birds
Angry Birds is a touch-screen video game created by Finnish computer game developer Rovio Entertainment (Rovio). It has simple plots, but even experienced players are able to find plenty of fun in it. After the great success of Angry Birds in China, any products related thereto also became popular, side effecting extensive copycat products and activities due to lack of authorization. In March 2014, Rovio filed a total of 15 infringement lawsuits in Nanning Intermediate People’s Court, including 5 trademark and 10 copyright infringement cases. Rovio alleged that it found a Guangxi-based real estate developer and its subsidiary hotel operate an adventure theme park called “Angry Birds” within their premises without any permission from Rovio. According to Rovio, posters, tickets and manuals of park activities and schedules are all printed with multiple roles of “Angry Birds”, which are also seen on walls, entrances and posters of the park. In addition, giant images based on the roles of “Angry Birds” are also erected in the park. Rovio alleged that the real estate developer and its subsidiary hotel have committed infringement upon its exclusive rights to use the registered trademarks and its copyright of relevant artistic works, and requested the court to order the defendants to immediately stop infringement and pay over 600,000 yuan in compensation for its economic losses. Nanning Intermediate People’s Court accepted the case and obtained, upon request from Rovio, the relevant evidence from the local administration for industry and commerce over investigations of the theme park. After several rounds of communications, the real estate developer agreed to settle the dispute through negotiations. Under the conciliation of the court, the two sides reached a mediation agreement and signed the paper of civil mediation in November 2014.
4. Mary Kay
Incorporated in the United States in 1963, Mary Kay, Inc. is one of the world’s largest direct sales companies of skin care and cosmetics products. It opened its first overseas factory in Hangzhou, Zhejiang Province in 1994. Hebei Changli Genghao Wine Co., Ltd. (Changli Company) planned to register a trademark “玫琳凯MARY KAY” on liquor (the opposed mark), which was opposed by Mary Kay Inc. Later the Trademark Review and Adjudication Board (TRAB) of the State Administration for Industry and Commerce approved registration of the opposed trademark, Mary Kay Inc. thus filed an administrative action. Recently, Beijing First Intermediate People’s Court revoked the TRAB decision in its first-instance ruling and ordered the TRAB to make a new decision. 
Changli Company applied to register the opposed trademark No. 6647904 in April 2008, designated for use on wine, brandy and other goods in Class 33. 
Mary Kay timely filed an opposition against the opposed mark, but the opposition was dismissed. 
Subsequently, Mary Kay requested review by TRAB, mainly on the grounds that the opposed mark is a reproduction and imitation of its well-known trademarks, which is likely to cause public confusion and harm its legitimate rights and interests. Mary Kay also claimed that the opposed trademark has interfered with the prior rights of its business name. 
Mary Kay alleged well-known status for two cited trademarks: No.1275186 “MARY KAY” trademark, filed for application by Mary Kay Inc. in February 1998 and approved for use on cosmetics and lipstick in Class 3; No. 1380186 “玫琳凯” (Chinese transliteration of “Mary Kay”) trademark, filed for application by Mary Kay Inc. in November 1998 and approved for use on cosmetics and concealers in Class 3. Currently both trademarks are in force. 
After the TRAB approved the registration of the opposed trademark, Mary Kay instigated an administrative proceeding in Beijing First Intermediate People’s Court.
Mary Kay contended that the two cited trademarks have been well-known for goods of cosmetics after long-term use and extensive publicity, and the opposed trademark is a reproduction and imitation of the two cited trademarks. The opposed trademark and the two cited trademarks co-exist in the relevant market, making it easy to cause public misunderstanding and harming its rights and interests. In the meanwhile, the opposed trademark is similar to the business name “玫琳凯”, thus the registration of the opposed trademark has also interfered with the prior rights of its business name.
In this regard, the court held that the evidence submitted by Mary Kay is sufficient to establish that the two cited trademarks have been recognized as wellknown trademarks on goods of cosmetics prior to the application date of the opposed trademark. The opposed trademark is a combination of the two cited trademarks and constituted plagiarism, duplication and imitation of the well-known trademarks of Mary Kay Inc., and thus Changli Company’s application for registration of the opposed trademark has constituted an unfair exploration of the market reputation of others’ well-known trademarks. Accordingly, the court made the aforesaid ruling.
5. Coca-Cola
The “冰露” (“Ice Dew” in Chinese) flavored water produced by Coca-Cola Company (Coca-Cola) was formally marketed in 2010. However, an individual by the name of Zhang in Guangdong Province tried to register the mark “冰露” on canned fruit, canned mushrooms and milk drinks, which was opposed by Coca-Cola. Later the TRAB decided to approve the registration of the trademark, Coca-Cola filed an administrative action in Beijing First Intermediate People’s Court. 
In August 2014, the court made the first-instance ruling and reversed the TRAB. 
It was reported that in August 2003, Zhang applied for registration of the “冰露” trademark (opposed trademark) under S/N 675199, designating canned fruit, canned mushrooms and milk drinks in Class 29. 
Coca-Cola timely filed an opposition with the Trademark Office, but the opposition was dismissed.  Therefore, Coca-Cola requested a review with the TRAB. 
Coca-Cola argued that goods of canned mushrooms and dairy products of the opposed trademark are similar to goods of whey beverages of the cited trademark, and the trademarks are similar, thus constituting similar trademarks on similar goods. 
The TRAB held that dairy products (milk-based) of the opposed trademark are similar to the goods of juice drinks (drinks) of the cited trademark, and the two trademarks have constituted similar trademarks on similar goods on the ground of possible confusion that may be caused among consumers as to the origin of the goods. Accordingly, the TRAB ruled to reject registration of dairy products (milk-based) on the opposed trademark and approve the registration of other goods for reexamination. 
Coca-Cola was dissatisfied with the TRAB ruling and filed an administrative action before Beijing First Intermediate People’s Court. 
At trial, Coca-Cola alleged that the cited trademark has been a well-known trademark for goods of nonalcoholic beverages, water (beverages) and mineral water in Class 32 after years of promotion and use prior to the application date of the opposed trademark. The application for registration of goods other than milk drinks (milk-based) has led the opposed trademark to be similar to the cited trademark on related goods.  Therefore, the cited trademark should be granted cross-protection and the opposed trademark should not be approved for registration. 
The court admitted the evidence, such as Coca-Cola’s media coverage, as sufficient to prove that the cited trademark has obtained certain degree of reputation in the bottled water market prior to the application date of the opposed trademark. The goods of the opposed trademark and the cited trademark are both commonly consumed drinks and food, and they are usually shelved in the same or approximate areas in supermarkets, therefore, the goods are basically the same in terms of function, distribution channels and consumer base. Based on the above, the court revoked the TRAB decision and ordered the TRAB to make a new decision. 

(Translated by Wang Hongjun)

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