Feynman LIANG Patent & Trademark Attorney	Published on Feburary 25, 2020

Scope of protection for well-known trademark may extend beyond the class for which the mark is registered. However, the scope of protection is case specific depending on several interactive factors. High degree of notoriety does not naturally enable the protection of the mark in another related class. Distinctiveness is also an important element in determining the scope of protection for well-known trademark, as indicated in the case Xiamen Jinpai Cupboard Holding Co. v. Jinpai Holding Co.

Jinpai Holding Co. (hereinafter referred as “the Mark Holder”) is the owner of the mark No. 11328331 “金牌“ (meaning “Gold label”, hereinafter referred as “the Mark in Dispute”) in class 6 for goods such as metal construction material; aluminum-plastic board; metal tube; household metal accessory; hardware; metal lock (non-electric); metal cloths hook; metal door; safe etc. Xiamen Jinpai Cupboard Holding Co. (hereinafter referred as “the Petitioner”) filed an invalidity petition against the Mark in Dispute on several grounds. As one of the grounds, based on Paragraph 3 of Article 13 of the Trademark Law of P. R. China below, the Petitioner claimed that the registration of the Mark in Dispute had led to confusion among the public and caused prejudice to the Petitioner’s well-known trademark No. 4657214 “金牌橱柜GOLDENHOME” (meaning “Gold label Cupboard GOLDENHOME”, hereinafter referred as “the Cited Mark”) for goods such as furniture; cupboard; table; cupboard with drawer; sofa; dresser; show box (furniture); chair (furniture); metal furniture etc.

Paragraph 3 of Article 13 of the Trademark Law of P. R. China
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 public 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.

According to the provision above, a three-prong test should be applied to determine whether a well-known trademark may cover goods in another class, specifically (1) whether the mark is well-known (2) whether the marks are similar (3) whether it leads to confusion among the public and cause prejudice to the well-known trademark holder.

In this case, the following evidences are provided:
-Awards that the Petitioner and the Cited Mark received;
-Certificates issued by the industry association;
-Tax receipt;
-Auditing report;
-Advertisement contract and invoice;
-Franchising agreement;
-Purchasing contract and invoice;
-Sales contract and invoice;
-Franchised shops locations on the map;
-Advertisement in the magazine.;
-Photos at the trade show;
-Outdoor advertisement specification;
-Previous infringement occurred to the cited mark;
-Recognition of well-known trademark by the Trademark Office in another case in 2010;

In the Invalidity proceedings before the Trademark Review and Adjudication Board (hereinafter referred as “the Board”), the Board believed the registration of the Mark in Dispute had led to confusion among the public and caused prejudice to the Petitioner based on the analysis of three-prong test below,

1. The Cited mark has become well-known trademark before the application date of the Mark in Dispute based on the submitted evidence such as franchising agreement, media coverage, advertisement, industry association certificate. Notably, the Cited Mark was recognized as well-known trademark in the previous case by the Trademark Office.
2. The Mark in dispute and the Cited Mark are similar marks. The distinctive portions of the Mark in Dispute “金牌“ and the Cited Mark “金牌橱柜GOLDENHOME” are both “金牌”（meaning “Gold label”）, leading to similarity of these two marks from perspectives of sound and appearance. Due to the difficulty in differentiating these two marks as a whole, it can be determined that the Mark in Dispute constitutes reproducing, imitating, translating of the Cited Mark.
3. The goods designated in the Mark in Dispute and goods designated in the Cited Mark have certain degree of connection from perspectives of function and use.

In conclusion, the Board held that when the Mark in Dispute was used on the designated goods, the public would be misled into believing the existence of the relationship between the Mark in Dispute and the Cited Mark, diluting the distinctiveness of the Cited Mark and causing prejudice to the Petitioner as a well-known trademark holder.

The parties involved was not satisfied with the decision of the Board and appealed the case to Beijing IP Court and eventually to Beijing Higher People’s Court. Both Beijing IP Court and Beijing Higher People’s Court disagreed with the conclusion of the Board on confusion and prejudice caused by the Mark in Dispute.

Among the three-prong test analyzed by the Board, Beijing Higher People’s Court agreed on the analysis of the first two prongs but holds a different view on the analysis of the third prong as follows.

1.The Cited Mark has become well-known before the application date of the Mark in Dispute.
2.The Mark in Dispute and the Cited Mark are similar.
3.The goods designated in the Mark in Dispute and the goods designated in the Cited Mark are not sufficiently connected and it will neither lead to confusion among the public nor cause prejudice to the Petitioner. First of all, The Cited Mark does not involve high distinctiveness. In the Cited Mark, “金牌橱柜GOLDENHOME” (meaning “Gold label Cupboard GOLDENHOME”) , the element “橱柜” (meaning “Cupboard”) is a generic term for the designed goods “furniture, cupboard, cupboard with drawer, show box (furniture )”. The core element “金牌” (meaning “Gold label”) usually denotes the quality of the goods. Secondly, the word “橱柜”(meaning “Cupboard”) naturally leads to connection of the Cited Mark to furniture such as cupboard. Thirdly, there are multiple other trademark registrations with the core element “金牌” designating class 20 after the registration date of the Cited Mark. Because of the weak distinctiveness of the Cited Mark, higher degree of notoriety is required to prove the unique connection between the Cited Mark and the Petitioner. However, the current submitted evidence is insufficient to prove the unique connection between the Cited Mark and the Petitioner. As for the designated goods, there are apparent differences between the goods of the Cited Mark and the goods of the Mark in Dispute in terms of function, use, manufacturers, sales channel, consumer groups.

In conclusion, Beijing Higher People’s Court held that registration and use of the Mark in Dispute did not necessarily lead to confusion among the public and cause prejudice to the Petitioner.

As it is indicated in the case above, high degree of notoriety does not necessarily enable the coverage of the related goods in another class. In this case, the Cited Mark was recognized as well-known trademark in the previous case and high likelihood of recognition of well-known trademark in the current case was presented. However, the weak distinctiveness of the Cited Mark lead to higher requirement of notoriety to prove unique connection between the Cited Mark and the Petitioner. The indication of elements taken into consideration is further provided in the Supreme Court’s notice below.

According to Article 13 of “The Notice of the Supreme People’s Court on Issuing the Opinions on Several Issues Concerning the Trial of Administrative Cases Involving the Authorization and Determination of Trademark Right”,

When the interested party holds that the mark in dispute constitutes a copying, imitating or translating the registered well-known trademark and such mark should not be registered or should be invalidated, the court should consider the following elements: (1) the distinctiveness and the notoriety of the mark (2) similarity of the marks, (3) extensiveness of the mark use (4) shared relevant public and degree of attention (5) legitimate use of similar mark by other entities.

Photo source: Shutterstock