Beijing Higher People's Court (the Court) recently issued its final decision finding a later trademark application for "蓝精灵" (pronounced as "Lan Jing Ling"), the common name of smurfs in China, similar to a prior trademark registration on a smurf image. This finding confirmed the earlier findings by Beijing 1st Intermediate Court and the Trademark Review and Adjudication Board.

The trademarks involved are trademark no. 6713412 for " " (the Opposed Mark) covering "coffee; tea; candies; pastries" etc. and trademark no. 1623034 for " " (the Cited Mark) covering "cakes; candies; biscuits;" etc. The similarity of goods is not the core dispute for this case, but the marks.

In the Court's 2nd instance judgement, the Court emphasized the importance of "distinctiveness" and "reputation" of the relevant trademarks when deciding similarities. The Court found that the cartoon series 蓝精灵 (The Smurfs in Chinese) had acquired a certain degree of reputation amongst the Chinese public (before the application date of the Opposed Mark). The Cited Mark is the image of a 蓝精灵 (smurf) while the Opposed Mark is the Chinese characters "蓝精灵". The registration of the Opposed Mark on identical or similar goods is likely to mislead the relevant public to believe the two trademarks are from the same provider or the providers are associated, which will cause confusion on the source of products.

The opponent in this case is Studio Peyo SA, the owner of the relevant IP rights in relation to The Smurfs.

In our view, the key reason Studio Peyo won the opposition is because the smurf image and the Chinese characters 蓝精灵 both were famous and the two had formed a strong and sole corresponding relationship due to the wide spread of the cartoon in China. The reputation and the inherent strong distinctiveness of the smurf image and the Chinese characters "蓝精灵" make the consumer think of nothing but the smurf when coming across the image or the Chinese name. Assuming the marks are a usual duck image and the word "鸭子" ("duck" in Chinese), the result of the case will likely be different.