Brief Introduction on the Administrative Litigation Case of the Trademark “MK & device”

Abstract

The first-instance court sustains the prior reputation of “MARY KAY” – the trademark and trade name of Mary Kay Inc., holds a view that the trademark “MK & device” (hereinafter referred to as “Disputed Trademark”) resembles Mary Kay Inc.’s cited trademarks “MARY KAY” and “MK MEN”, and therefore does not approve the Disputed Trademark to be registered. (Please be noted that the case now has been under the second instance)

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The Disputed Trademark     

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The Cited Trademark

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The Cited Trademark

Brief Introduction

Yiwu City Lang Tao Cosmetics Co., Ltd. (hereinafter referred to as “Lang Tao Company”) submitted the application to register the Disputed Trademark designating to the goods of facial cleanser, cosmetics and toothpaste in Class 3 to the Trademark Office of State Administration for Industry and Commerce of the People’s Republic of China (hereinafter referred to as “TMO”). Mary Kay Inc. filed opposition against the Dispute Trademark, holding a view that it resembles those trademarks “玫琳凯”, “MK MARY KAY” and “MK MEN” in identical or similar goods, as well as infringes other prior rights of Mary Kay Inc.’s.

TMO overruled the request of Mary Kay Inc., determining that the Disputed Trademark could be approval to be registered. Mary Kay Inc. dissatisfied with the determination and filed appeal to Trademark Review and Adjudication Board of State Administration for Industry and Commerce of the People’s Republic of China (hereinafter referred to as “TRAB”) with the same reasons. TRAB held a view that the Disputed Trademark was similar to those cited trademarks owned by Mary Kay Inc. in similar goods, and therefore overruled the application of registration of the Disputed Trademark. In March of 2014, dissatisfying with the  TMO overruled the request of Mary Kay Inc., determining that the Disputed Trademark could be approval to be registered. Mary Kay Inc. dissatisfied with the determination and filed appeal to Trademark Review and Adjudication Board of State Administration for Industry and Commerce of the People’s Republic of China (hereinafter referred to as “TRAB”) with the same reasons. TRAB held a view that the Disputed Trademark was similar to those cited trademarks owned by Mary Kay Inc. in similar goods, and therefore overruled the application of registration of the Disputed Trademark. In March of 2014, dissatisfying with the  determination made by TRAB, Lang Tao Company raised administrative litigation to Beijing No. 1 Intermediate People’s Court (hereinafter referred to as “first-instance court”) with the following reasons: (1) the Disputed Trademark “MK & device” is not similar to the cited trademarks mentioned above, for the consisting elements are obviously different; (2) the designated goods of the Disputed Trademark and cited trademarks are also not similar, for the goods of facial cleanser and toothpaste are different from those of cosmetics which the cited trademarks mainly designate to.

Shanghai Heng Fang Intellectual Property Consulting Co., Ltd. (hereinafter referred to as “HFG”), commissioned by Mary Kay Inc., designates Lanny LI (attorney at law) and Jack ZHANG (attorney at law) to join in the lawsuit.

The Intricacies and Disputed Points of the Case

First of all, there is the significant difference in overall vision between the Disputed Trademark and the cited trademarks. Secondly, it is “MARY KAY”, other than “MK”, that is the well-known trademark of Mary Kay Inc.

Following is the main opinions of Lang Tao Company:

  1. The Disputed Trademark is obviously different from the cited trademarks in the whole vision.
  2. The Disputed Trademark is designed by Lang Tao Company, with no meaning, and of high distinctiveness.
  3. In practice, several trademarks containing the English letters “MK” have already been registered successfully. Lang Tao Company provided the registration information of the trademarks containing the English letters “MK”.

The Evidence and Opinions Supported by the First-instance Court

HFG did a lot of work to prepare for the litigation. On one hand, HFG actively communicated with the attorney of TRAB – the defendant of the litigation. On the other hand, HFG prepared large quantity supplementary evidence as follows:

  1. The statistics for advertisement and promotion of the products of the brand “MARY KAY” in the past years;
  2. The statistics for sales and market ranks of the products of the brand “MARY KAY” in the past years;
  3. The awards and prizes granted to the brand “MARY KAY”;
  4. The utilizing condition of the brand “MK MEN”;
  5. The appreciation and feedback to the brand “MARY KAY” from the consumers on the internet.

The Main Opinions in the Statement of HFG Attorneys’ is as follows:

  1.  “MARY KAY” is Mary Kay Inc.’s main trademark and trade name which have been being used since 1989 when they started to be registered, resulting in extremely high reputation and influence in the relevant public. The trademark “MARY KAY” has been granted as well-known trademark on the goods of cosmetics in Class 3.
  2. The two letters “MK” are separately the first letter of the trademark’s two words “MARY KAY”. The two letters are permanently used as an abbreviation of the trademark and trade name “MARY KAY”. Through the use of combination, “MK” has been closely associated with “MARY KAY” and has been an equivalently significant and distinctive part in the trademark “MK MARY KAY”. Therefore, the Disputed Trademark is easy to confuse the relevant public, leading the public to associate it and its goods with, and/or to think that its goods come from Mary Kay Inc.
  3. It is indeed that there is a certain difference between the Disputed Trademark and the cited trademarks, but it shall be fully considered that the first impression and cognitive habit have been formed in the relevant public when judging the similarity among the trademarks. Mary Kay Inc. has been using “MK” and “MARY KAY” in combination for a long time, which makes the consumers think of the brand “MARY KAY” when they are at the first sight of “MK”. Hence, the consuming habit and the market pattern that have been shaped by Mary Kay Inc.’s efforts of investment, and the trust benefit of the consumers thereof shall be fully protected, which requires to eliminate the possibility of consumers’ confusion and to overrule the application of the Disputed Trademark.

Judgment of the First Instance

According to the large quantity of evidence of prior reputation of the brand “MARY KAY”, the first-instance court finally decided to accept the third party -- Mary Kay Inc.’s opinions of response, fully considering the influence that brought to the possibility of trademark confusion by the prior reputation of the trademark and trade name “MARY KAY”, holding a view that the trademark “MK & device” and the cited trademarks “MARY KAY” and “MK MEN” are similar, and therefore overruled the claims of Lang Tao Company.