An Hui Feng Tan Jiu Ye Marketing Co., Ltd. (referred to as Feng Tan Company) filed a trademark application No.7163694 on January 13, 2009 for the mark “好美思HERMES & device”. The application was then published on goods “Distilled beverages; bitters; Anisette [liqueur]” in class 33.
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Hermes International opposed this mark within the time limit, but the Trademark Office decided to approve the registration of the mark. Hermes refused to accept this decision and appealed to TRAB on June 1, 2012.
----Appeal against opposition decision----
【Grounds of Hermes International】
The trademark of “HERMES & device” registered on “clothing, bag. etc.” by Hermes International is well-known in China, the application of“好美思 HERMES & device” is an imitation, and it will cause confusion and bring harms to the interest of Hermes International. In addition, the application of the opposed mark is in bad faith, and it damages the trade name right of Hermes International.
【Decision of TRAB】
December 2, 2012, the TRAB decided to approve the registration for mark “好美思HERMES & device”.
Hermes International was not satisfied with the decision of TRAB and appealed to the Beijing First Intermediate Court. The Court dismissed the claims of Hermes International as they held that the mark “好美思 HERMES & device“ does not infringe the trade name right of Hermes International, and does not have unhealthy influence either. Hermes International refused to accept this decision and appealed to the Beijing High Court.
----Second instance (final instance) ----
【Views of Beijing High Court】
The Court hold that the whole appearance of "好美思HERMES & device" and “HERMES & device” are obviously different. The same “HERMES” is not sufficient to identify that “好美思HERMES & device " is a duplication, imitation of the mark “HERMES & device".
Even if the "HERMES & device" has been recognized as a well-known mark on “bags, clothing”, "好美思HERMES & device" will not lead to a misunderstanding among the relevant public, and damage the interests of Hermes International.
Beijing High Court also believes that even if "HERMES" has been used on “clothing, bags” as the trade name and obtained a certain reputation, because of the big differences between the two marks and their goods, the public will not mistakenly believe that the two marks has some relationships and will not confuse them. So "好美思HERMES & device" does not damage the prior trade name right of Hermes International.
In addition, the Beijing high court believes that “unhealthy influences” in Article 10.1(8) of Trademark Law refers to the trademark itself damage the political, economic, cultural and other public interests and public order. ""好美思HERMES & device" does not have the unhealthy influences.
Beijing high court rejected Hermes International appeal, and maintain the registration of "好美思HERMES & device".
There are two theories on identifying the protection scope of well-known trademarks: anti-dilution theory and confusion theory. Anti-dilution theory focuses on the behaviors reducing the distinctiveness of trademark; and confusion theory focuses on misidentification or confusion of public consumers.
The well-known trademark protection is not borderless; the rejection of cross class protection for well-known trademark in this case is identified by the confusion theory. The goods of "好美思 HERMES & device" mark and " HERMES & device " mark are so different, that the consumers will not misidentify for confuse them.
(Associate Professor, Law School of Soochow University