The Beijing No 1 Intermediate Court recently gave well-known mark status to the trademarks IKEA and 宜家 (IKEA in Chinese) in Class 20 for furniture. As a result, the court held that registration of the mark shown below in Class 6 for “safety cash box, metal containers, signboards of metal” by an unauthorised party should be refused.
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With over 20 stores in China, the world-renowned IKEA chain of home stores has operated for around 20 years in China and is hugely successful. Although the name and trademark IKEA/宜家 are de facto well known in China, the company still had to undergo a legal procedure to get the mark recognised as well known in order for it to enjoy extended protection. The procedure is as follows:
- The recognition must be confirmed through a dispute action relating to the use or registration of the disputed mark – for example, an infringement action before the court or the Administration for Industry and Commerce, or an opposition or invalidation action at China Trademark Office, the Trademark Review and Adjudication Board or the court.
- The dispute cannot generally be resolved through use of an existing registration for the same or similar mark in respect of the same or similar goods.
- There must be relevant, admissible and sufficient evidence in support to substantiate the high reputation of the trademark. This criterion is difficult to satisfy as the standard applied appears to be discretionary or even non-transparent. Experience shows that the quality of the evidence is more important than the quantity. Moreover, how the evidence is presented is extremely important – for example, the trademark examiner or judge cannot be expected to go through the bundles of evidence in detail before rendering a decision.
In the trademark opposition at hand, the evidence submitted proved satisfactorily that the IKEA/宜家 brand of furniture entered onto the Chinese market in 1998 and several IKEA/宜家 stores were already operating in China before the application date of the opposed mark. As a result of extensive promotion and high sales figures, the relevant public was fully aware of IKEA/宜家.
Having determined that IKEA/宜家 was well known in respect of furniture at the relevant times, under the law the court also had to consider two other issues in order to refuse registration of the opposed mark:
- The court was satisfied that the opposed mark was a copy or imitation of IKEA/宜家 as the opposed mark incorporated the well-known IKEA/宜家 mark in its entirety. The additional elements in the opposed mark did not give it a different meaning from IKEA/宜家 (the character 新 on the left side of the mark meant “new”).
- The court was also satisfied that use or registration of the opposed mark would mislead the public, likely prejudicing the rights holder's interests. This resulted from the degree of commonality in the furniture goods and the opposed goods, such that there was a likelihood that the relevant public could form an association between them, and thereby the link between IKEA/宜家 and furniture would be broken, weakening the distinctiveness of IKEA/宜家.
Howard Tsang, Esther Wai-Ling Ho
This article first appeared in IAM. For further information please visit www.iam-media.com.