Article 13 of Chinese Trademark Law: Where a trademark applied for registration in respect of different goods is a duplication, imitation or translation of other person’s well-known trademark which has been registered in China and the applied trademark is likely to mislead the public and bring harms to the interests of the registrant of the well-known trademark, it shall not be allowed for registration and shall be forbidden from practical use.
According to this provision, the protection for well-known trademark which has been registered in China is applied to non-identical or dissimilar goods or services, which is normally called cross-class protection. However, the cross-class protection is not a protection for all classes, but a proper protection adapted to the degree of its reputation.
2. Two cases on protection scope
Case 1: Trademark infringement of Cartier International N.V. v. Yunnan Cartier Wedding Photography Co., Ltd.
The plaintiff Cartier International N.V. has registered the marks ”卡地亚”、“Cartier “in class 14 on goods “jewelry, jewelry products, precious stones, etc.” The defendant used “卡地亚” as its trade name, and used “卡地亚那”、“Cartirena” as trademarks on services of “wedding photography” in class 41. The court held, the plaintiff’s trademark is well-known o jewelry products, although the products provided by the plaintiff and services provided by the defendant are in different industries and classes, they are both consumer goods in the fields of life and both relate to areas of fashion culture, so the involved public are correlative. Based on this, the court finally ruled that the defendant infringed the plaintiff’s trademark right.
Case 2: Administrative dispute on trademark opposition review of YKK Corporation v. Ruianshi Libo Motor Vehicle Parts Co., Ltd.
YKK Corporation has registered the trademark “YKK” on goods “Zippers” very early in China. Ruianshi Libo Motor Vehicle Parts Co., Ltd.(hereafter as Libo) later applied for registration of the same mark on goods “Transmission shafts for land vehicles; Crankcases for land vehicle components [other than for engines]; Automobiles; Windscreen wipers; vehicle interior decoration products, etc.”, In the opposition, and subsequent opposition review, administrative lawsuit of two instances, based on the ground that the goods of the two parties are very different, Libo’s application was all approved for registration. YKK Corporation was not satisfied with the final judgment and appealed to The Supreme People’s Court of China for rehearing.
The Supreme Court reheard the case and held that the evidences provided by YKK Corporation showed that zippers can be used as vehicle’s interior decoration and zippers and vehicle’s interior decorations are the upstream and downstream products. As YKK is a fabricated word and is conspicuous and based on the facts that “YKK” trademark on zippers products already have high reputation and zippers and interior decorations of vehicles are the upstream and downstream products, the Court ruled that YKK trademark is protected for “interior decorations of vehicles”, but for goods “Transmission shafts for land vehicles, automobiles” which are far away from “Zippers”, the protection cannot be provided.
The cross-class protection scope of a well-known trademark shall depend on the distinctiveness of the mark, the level of awareness by relevant public, the relevance of the goods and the balance of interests of involved parties. In respect of the relevance of the goods, normally speaking, if the goods of the well-known trademark and the goods of the disputed mark have high correlation, like belonging to the same consumption fields, having same consumers, or being upstream and downstream products, the cross-class protection is more likely to be provided. In addition, the greater reputation a trademark obtains by using, the greater scope of being protected it should have.
The cross-class protection for well-known trademark in China is neither a borderless full class protection, nor a narrow protection making damages to right owners. It is a proper protection scope based on principle of appropriate protection.