Worldwide Brands, Inc. (WBI) vs. TRAB; Wan Jingang (a Chinese person)
WBI is the owner of the international registration No.814414H - trademark (click here to view trademark) with regard to clothing, shoes and hats in class 25. A third party - Wan - filed an action with the TRAB for cancellation of the “Camel Active and design” mark on 1 March 2010, on the grounds that this mark was similar to the (click here to view trademark) (the Chinese characters mean “camel brands”) mark registered under Registration No. 101337 (Cited Registration 1) with regards to shoes and the (click here to view trademark) (Luo Tuo, means “camel”) mark registered under Registration No. 3477203 (Cited Registration 2) with regards to various clothes, owned by him (he is the legal representative of a Chinese apparel company – Guangdong Camel Apparel Co., Ltd.).
On 31 March 2012, the TRAB issued its decision, concluding that the trademark in dispute and the cited registrations referred to the same thing – a camel, and they were similar in relation to meaning, so they had no substantial differences. The TRAB felt that the co-existence of the marks with regards to clothing and shoes would cause confusion, but that the trademark registered with regards to hats would not cause confusion, since the hats were not similar to those covered by the cited registrations. The TRAB also pointed out in its decision that WBI did not file sufficient evidence proving that its trademark was a well-known mark that was widely used in China, and/or attracted copyright protection under the PRC Copyright Law. Therefore, the TRAB ordered that the goods description be amended by the deletion of clothing and shoes.
WBI appealed to the Beijing No.1 Intermediate People’s Court, on the grounds that although the deleted goods may be similar, the marks themselves were not similar, so confusion was unlikely.
The Intermediate Court maintained the TRAB’s decision, on the grounds that the meanings of the trademark in dispute and the cited registrations both involved a camel animal – although the mark in dispute used English, the English words were common and Chinese consumers knew their meaning well. The court felt that consumers would be confused if the marks with the same core meaning were both used on clothing, so the TRAB’s decision regarding the similarity of the trademark in dispute and the cited registrations was upheld. Regarding WBI’s claim that its trademark had obtained a high level of distinctiveness through use so that could be distinguished from the cited registrations, the court decided that WBI had not provided sufficient evidence to prove this, and noted that a significant amount of evidence proving substantial use in China for many years, would be needed.
The Higher Court its decision on 4 June 2013. It concluded that the goods – clothing and shoes - covered by the trademark in dispute, were closely related to those goods included in the cited registrations in terms of functions, usage, consumers and sales channels, and therefore, these goods constituted the “same or similar goods” as per the PRC Trademark Law. Regarding the marks, the court held that the camel device, and camel in English and Chinese, were the significant parts of the marks – in doing so, the court felt that it could not find that confusion was unlikely, as the marks were extremely similar. Finally, the court concluded that the evidence filed by WBI could not prove its trademark had obtained a certain reputation through use before WBI filed the application for territorial extension protection for this mark in China, so that relevant public could distinguish the marks. Thus, the Intermediate Court’s decision was maintained.