Facts
Decision Decision
Comment



General Mills Marketing, Inc recently obtained a victory against a trademark squatter before the Trademark Review and Adjudication Board. The board affirmed the well-known status of the Chinese translation of 'Häagen-Dazs' and rejected the bad-faith application of the mark HÖOGEN-DAZS (see Figure 1).

Figure 1

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Facts

General Mills is a US Fortune 500 company, primarily concerned with food products. It markets many world-famous brands, including Häagen-Dazs, Betty Crocker, Wanchai Ferry, Yoplait, Green Giant and Bugles.

In August 2003 Deqiang Zeng, a resident of China's Hainan Province, applied to register the trademark HÖOGEN-DAZS in respect of apparel (eg, gloves, jackets, trousers, down and leather clothing, shoes, hats, hosiery, neckties and leather belts) in Class 25. This application was preliminarily approved and published for opposition by the Chinese Trademark Office in January 2006.

General Mills filed an opposition in a timely manner; however, the Trademark Office rejected the opposition and ruled in the applicant's favour. General Mills appealed for review of opposition before the Trademark Review and Adjudication Board in April 2010.

Decision

In September 2012 the board decided in favour of General Mills and rejected the application of the opposed trademark. The board held as follows:

  • The trademark HA GEN DA SI (the Chinese translation of 'Häagen-Dazs'; see Figure 2) was widely used and advertised before the filing date of the opposed trademark, and had been recognised as a well-known trademark by the Trademark Office in 2011. Based on the evidence submitted by General Mills, the trademark HA GEN DA SI was well known before the filing date of the opposed trademark after extensive use and advertising, and thus its status as well known in respect of ice creams should be reaffirmed.
  • The evidence submitted to the board proved that the trademark HÄAGEN-DAZS (see Figure 3) was combined with its Chinese translation (ha gen da si) in actual use and advertising, and had also obtained a good reputation in the market. The trademark HÄAGEN-DAZS had established a unique connection with its Chinese counterpart HA GEN DA SI.
  • The opposed trademark HÖOGEN-DAZS had an identical composition and design as the trademark HÄAGEN-DAZS, and the word 'Höogen-Dazs' was close to 'Häagen-Dazs'. These two trademarks appeared almost identical in overall appearance. Therefore, the opposed trademark constituted duplication and imitation of its counterpart in a foreign language of another's well-known trademark. Its registration and use would likely mislead consumers and harm the interests of General Mills. The registration of the opposed trademark violated Article 13.2 of the Trademark Law and thus should be rejected from registration.

Figure 2

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Figure 3

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Due to the Trademark Office and the board's strict rules and practice in recognising and protecting well-known trademarks, in the past the protection of a well-known trademark seldom extended to its counterpart in Chinese or a foreign language. In January 2012 the board had dismissed another appeal for review of opposition filed by General Mills in relation to the trademark HÄAGER-DASZ in Class 25, which was appealed to Beijing Number 1 Intermediate Court.

However, in this case, although the mark HÄAGEN-DAZS had not been recognised as well known, based on the well-known status of its counterpart in Chinese (HA GEN DA SI), the board still ruled that the opposed trademark, which imitated HÄAGEN-DAZS, infringed General Mills' well-known trademark HA GEN DA SI. In addition, this was the first time that the Häagen-Dazs brand was protected in respect of apparel in Class 25.

Comment

This decision sends a strong message – that the board is strengthening protection of well-known trademarks and intensifying its efforts to prevent trademark squatting. In March 2012 the Supreme People's Court completed a first draft of its opinion on this issue. In April and August 2012 the court held seminars and an in-depth discussion on this draft. The opinion implies that the concept of a well-known trademark will continue to play an important role in the trademark protection system in China, and that courts will be more flexible in using this system and/or other legal bases to prevent bad-faith registrations.

For further information on this topic please contact Mingming Yang at Wan Hui Da Law Firm & Intellectual Property Agency by telephone (+86 10 6892 1000), fax (+86 10 6894 8030) or email (yangmingming@wanhuida.com).

This article was first published by the International Law Office, a premium online legal update service for major companies and law firms worldwide. Register for a free subscription.