It is of great importance to establish the connection, in the minds of the consumers, between a foreign name in Latin characters and its Chinese transliteration, because the scope of protection of one can be extended to the scope of protection of the other, and vice versa. It is also important to establish the reputation of a trade name.
Hermès, with a history of more than 170 years, is one of the most famous luxury brands around the world. It has 17 product lines, including bags, silk scarves, neckties, clothing for men and women and artworks for daily life. With its headquarter located in Paris, Hermès has boutiques all over the world.
In China, the name Hermès is registered in any forms: Latin characters, with or without a logo, Chinese (traditional and simplified) characters. Hermès International, owns the brand HERMES, and
- “HERMES in traditional Chinese characters” No. 2021326 applied in 1996 and registered in 2003 (cited mark I),
- “HERMES in simplified Chinese characters” No. 2020629 applied in 1997 and registered in 2003 (cited mark II), which are both used on clothing, shoes and hats in Class 25.
Hermès International also owns the trademarks “HERMES & Device”
- No. 76079 registered in 1983 (cited mark III) and
- No. 248937 registered in 1986 (cited mark IV), which are both used on hosiery, scarves, gloves and clothes in Class 25.
On December 2, 2004, Suzhou SHENG YI MA Garment Co., Ltd. applied for the registration of the trademark “GEORGE HERMES in traditional Chinese characters” (“the opposed mark”), which reproduces Hermès’ “HERMES in traditional Chinese characters”, and is therefore slightly different from the Hermès brands, designating “hats, layettes, bathing suits, shoes, clothing, hosiery, gloves [clothing], neckties, girdles and rain coats” in Class 25.
In September 2008, Hermès International filed an opposition against this mark.
In March 2011, the CTO made a decision, affirming that the opposed mark and the opponent’s cited marks constitute similar marks for hats, shoes and clothing. The CTO decided to refuse the registration of this mark for goods of hats, shoes and clothing, but approved the registration of the mark on other goods.
On April 22, 2011 Hermès International filed an application for review with the TRAB, based on the following grounds:
- Its marks “HERMES in Chinese” and “HERMES & Device” are well-known trademarks for handbags and suitcases, and the opposed mark is a copycat and imitation of its well-known marks;
- The opposed mark is similar to the cited marks I~IV in respect of identical or similar goods;
- The opposed mark also infringes its prior right on its trade name.
Hermès International submitted a large amount of evidence of the promotion and use in China of its marks “HERMES in Chinese” and “HERMES & Device”, as well as evidence of the well-known status of its marks and records of their being infringed and protected.
On February 25, 2013, the TRAB rendered a decision holding that the designated goods of the opposed mark, which include layettes, bathing suits, hosiery, gloves [clothing], neckties, girdles and rain coats, are not similar to those of the cited marks I and II, but are similar to those of cited mark III and IV.
However, the TRAB reversed the CTO’s decision by using the following reasoning:
- Evidence submitted by Hermès International showed that through long term promotion and use, a relationship has been established in the minds of the consumers between the marks “HERMES” and its counterpart “HERMES in Chinese”.
- Even though the cited marks III and IV were only composed of a word in Latin characters and a device, the consumers would still, because of their awareness of the link between the name Hermès and its Chinese transliteration, take the word “HERMES” as the prominent part of the marks.
- Therefore, since the latter part of the opposed mark, which consists of the words “GEORGE in Chinese characters” and “HERMES in Chinese characters”, is similar to the Chinese counterparts of the cited marks III and IV, the coexistence of both parties’ marks is likely to cause the consumer to believe that the two parties belong to the same market participant or have some relationship, which would cause consumers’ confusion and misidentification about the source of products.
The TRAB decided, therefore, that the marks are similar marks in respects of identical or similar goods as provided in Article 28 of the Trademark Law.
Besides, the TRAB also affirmed that the evidence submitted by Hermès International proves that the name “HERMES in Chinese” has gained a certain influence for clothing, wrist watches, handbags and silk scarves as a trade name. Considering that the opposed mark was similar to the trade name “HERMES in Chinese” and therefore infringed the Hermès’ prior right on its name, the TRAB stated that the application violated the provisions of the Article 31 of the Trademark Law (which protects prior rights that have been used and have acquired a certain influence).
Finally, the TRAB decided not to approve the registration of the opposed mark based on Articles 28 and 31 of the Trademark Law.
With regard to Hermès’ opposition ground no.1 (“HERMES in Chinese” and “HERMES & Device” are well-known trademarks for handbags and suitcases, and the opposed mark is a copycat and imitation of its well-known marks), TRAB asserted that the reputation of Hermès’ trademarks have been taken into consideration when deciding the similarity of the opposed trademark and the cited trademarks, and its decision has been made not to allow the registration of the opposed trademark, therefore, it is unnecessary to recognize well-known trademarks as Hermès’ trademarks have gained enough protection in this case.
Click here to view trademarks.
In this case, in order to decide whether the opposed mark and the cited marks constitute similar marks, the TRAB used an interesting method of indirect comparison. It first stated that the opposed mark is similar to Cited marks I and II but that the designated goods are dissimilar. It then stated that the opposed mark is not similar to the cited marks III and IV, but that their designated goods are similar. Nevertheless, the TRAB established a “bridge” between the two series of cited marks, holding that the prominent parts of cited marks III and IV are perceived by the consumers as having a close connection with cited marks I and II, and this connection point allowed the TRAB to affirm that the opposed mark is similar to cited marks III and IV.
Furthermore, the TRAB supported Hermès International’s claim on its trade name right and confirmed the influence of “HERMES in Chinese” as a trade name. There are few precedents of protection of trade names of foreign companies. Thus, it is of great significance for Hermès International to protect its legal rights in China.