The American giant Procter& Gamble (P&G) recently appealed to the Beijing Higher People’s Courtfor its lawsuit against Guandong Xuerou Fine Chemical Industry Co., Ltd.(Xuerou) which owned the trademark “伊卡璐” (Yīkǎlù) that P&G asks to be cancelled.

This controversy started in 2009 but dates back in 1997. In that year the registration of the trademark “伊卡璐” was filed by Jia Liya Cosmetics Co., Ltd., which obtained the registration in 1998 in Class  5 (air fresheners). In 1999 the trademark was transferred to Chaoyang City Xuerou Fine Chemical Industry Co., Ltd. which changedits corporate name to Guandong Xuerou Fine Chemical Industry Co., Ltd. (Xuerou)in 2005. On the other hand, the same trademark “伊卡璐” was filed for registration by Guangdong Apollo Cosmetics (Apollo) in 1994 and registered in 1996 in Class 3 (detergents). In 2003 this trademark registered in class 3 was acquired by P&G.

In  2009 P&G addressed its request to the TRAB(Trademark Review and Adjudication Board) asking that the trademark “伊卡璐”used by Xuerou and registered in Class 5 was a distinct and known Chinese trademark which recalled the trademark “Clairol”,  for this reason the registration of the trademark on similar goods was indeed an in fringement. P&G brought as evidence that it started to sell its skin care products in China with both trademarks “伊卡璐” and Cairol since 1996. This long exposure to the consumers,  in P&G’s opinion, should have made the trademark ““伊卡璐”,”well known in China. The Beijing Higher People’s Court found that though P&G proved that it used the trademark from 1996 to 1998, the trademark was transferred  to P&G in 2003 and priorto 2003 P&G hadn’t signed any trademark licensee agreement with Apollo, so  the use of evidences from 1996 to 1998 was invalid as far as this lawsuit was concerned.

In summary, theuse of the trademark prior to the assignment is not accepted by court as valid usage evidence in the absence of the trademark licensee agreement with formertrademark owner.