“The evidence provided by the Opponent can prove LAFARGE in Chinese & Latin is a trade name of high reputation in respect of cement, gypsum and related building materials. The Opposed Trademarks are identical with the Opponent’s name in respect of Chinese character and letter components. The designated goods of the Opposed Trademarks are closely associated with the goods distributed by the Opponent. The Opposed Trademark infringes the trade name right of the Opponent.”

Legal and Regulatory Background

This case is based on Article 32 of the 2013 version of the “Trademark Law”, which provides that “The application for trademark registration shall not be allowed to harm other person’s prior rights, and no preemptive application by any unfair means of a trademark which has been used by another person and has a certain influence shall be allowed for registration”.

Case Summary

Established in 1833, LAFARGE, SOCIETE ANONYME (hereinafter referred to as LAFARGE) is a world leader in building materials with its business operation network covering China and 74 other countries and regions around the world. Its major products include cement, concrete, aggregate, gypsum building material, roofing system and related building products. LAFARGE is ranked at the top of this industry around the globe.

LAFARGE has registered with the China Trademark Office (CTMO) the trademarks  “LAFARGE”, “LAFARGE in Chinese character” as well as “LAFARGE & device” in several classes.

On March 19, 2012, a Chinese individual, Mr. Wang applied for the registration of the trademarks “LAFARGE in Chinese” No. 10636173 (See Image I) and “LAFARGE” No.10636172 (See Image II) for the following goods: “emery paper; furbishing preparations; sandpaper; abrasives; rubbing emery; sharpening preparations; nail varnish; air fragrance preparations; polish for furniture and flooring; sand cloth (abrasive cloth)” in Class 3.

Click here to view image.

Click here to view image.

On February 13, 2013, both trademarks were preliminarily approved by the CTMO.

On March 21, 2013, LAFARGE filed oppositions against the above trademarks (Opposed Trademarks) with the CTMO, citing its prior trademark registration in class 19 and the "prior right" constituted by the word Lafarge, both in Latin and Chinese characters, recorded as the name of the company (trade names).

On April 13, 2015, the CTMO made the decisions not to approve the registration of these two marks, by citing the Opponent’s prior trade name right.

In the decisions, the CTMO held that the Opponent’s trade names LAFARGE in Chinese & Latin are created by the Opponent and are of strong originality. The submitted evidence could prove that LAFARGE in Chinese & Latin are trade 

names of high reputation among the related consumers for cement, concrete and related building material. The Opposed Trademarks are comprised of Chinese character or foreign letter identical with LAFARGE’s trade names. The goods “polish for furniture and flooring; abrasives” have a close association with the Lafarge products. The registration and use of the Opposed Trademark infringe the trade name right of Opponent and violated the Article 32 of the China Trademark Law. The Opposed Trademarks should not be approved for registration.

WAN HUI DA represented LAFARGE in the opposition procedure.

Comments:

The Trademark Review and Adjudication Board (TRAB) has explicitly elaborated in its official newsletter the pre-requisite for invoking protection over prior trade name, i.e. “ The cited trade name shall have certain reputation among the relevant consumers in China; the registration and use of the disputed trademark is likely to cause confusion among the relevant public which could be detrimental to the interests of the prior trade name owner”. The TRAB also added in the newsletter that “In principle, in order to adopt the aforesaid examination criterion, the designated goods or services provided by the trade name owner and those of the disputed trademark shall be identical or similar”.

Nevertheless, it would be advisable to interpret the similarity of goods or services of the two parties as mentioned in the preceding paragraph as an “optional clause” because the protection for prior trade name should be aiming at avoiding confusion among consumers and preventing damage to the prior trade name owner’s interests. In light of the diversification of modern enterprises and the fact that consumers are used to such reality, if the prior trade name is of high reputation and the disputed mark is  obviously filed with bad faith, it would be reasonable to extend the protection of a prior trade name to goods/services that are closely associated with the trade name owner because the registration of trademarks on such goods or services is also likely to cause confusion among the relevant public and damage the interests of the trade name owner.

In this case, the CTMO also took into account the originality of the Opponent’s prior trade name. Therefore, the following factors would be worth considering when invoking protection over a trade name: the originality of the prior trade name, the similarities between trade name and trademark, the association between the goods involved, as well as the reputation of the trade name itself.