A Shanghai court has found that the mark MYBELIVE, which was registered in Class 3 for cleaning products, infringed L'Oréal's registered trademark MAYBELLINE when used for cosmetics.
International cosmetics and beauty company L'Oréal owns several trademarks in China, including 美宝莲, MAYBELLINE, WATERSHINE, and UNSTOPPABLE, all four of which are registered in Class 3 for cosmetics. Shanghai Zhuang Yan Cosmetics Company Limited distributed cosmetics bearing the marks MYBELIVE, WATER SHINE and the combined trademark ⊔⊓STOPPABLE.
Shanghai Zhuang Yan Cosmetics applied to register MYBELIVE in Class 3 for washing powders and cleansers, which are different from cosmetics. The Trademark Office granted the registration on April 14 2010.
In May 2011 L'Oréal sued Shanghai Zhuang Yan Cosmetics before the Shanghai Minhang District People's Court, claiming that MYBELIVE was similar to its registered mark MAYBELLINE and that the defendant's use of the mark constituted trademark infringement.
On November 16 2011 the court ruled that the marks used by the defendant were confusingly similar to the plaintiff's registered marks, and that such use constituted infringement. The court also found that the defendant's use of the enterprise name 美国美宝莲化妆品有限公司 ('US Mei Bao Lian Cosmetic Company') constituted free riding on L'Oréal's market reputation and was an act of unfair competition. The court ordered the defendant to cease the infringing acts and pay Rmb120,000 in damages.
This case demonstrates the implementation of the Judicial Interpretation on Several Issues on the Trial of Cases Concerning Conflicts Between Registered Trademarks, Trade Names and Prior Rights, published by the Supreme People's Court on February 18 2008. Following Article 1(2) of the interpretation, the court upheld the plaintiff's claim that although MYBELIVE, used for cosmetics, was registered in the same class as MAYBELLINE, the fact that defendant's trademark was registered for cleaning products, rather than cosmetics, created a conflict with the L'Oréal trademark on which the court could rule. L'Oréal did not have to file an administrative action for cancellation of the MYBELIVE mark before bringing a civil action. Furthermore, the court found that the meaning of MYBELIEVE and the alteration in the mark ⊔⊓STOPPABLE were no obstacles to a determination of similarity to MAYBELLINE and UNSTOPPABLE.
For further information on this topic please contact Charles Feng or Paul Ranjard at Wan Hui Da Law Firm & Intellectual Property Agency by telephone (+86 10 6892 1000), fax (+86 10 6894 8030) or email ([email protected] or [email protected]).