- The goods that have certain connection in the way of use but are different in terms of function, purpose, production sector, sales channels and targets will not be regarded as “similar goods” – copyright in an artistic work needs to be proved objectively, before a court will be willing to apply the Copyright Law in a trademark appeals case (Article 28 of the PRC Trademark Law)
Balenciaga v. TRAB & Li Shaoxiong (the third party)
Balenciaga filed an opposition against the application for registration of the mark “BELENCIAGA & design” No.3754886 filed by Li Shaoxiong and preliminarily approved by CTO on 7 September 2005, based on their cited registrations No.598321 - “BELENCIAGA” and No.1070504 - “Double B device”. The opposition was refused by the CTO, and the TRAB.
Beijing No.1 Intermediate People’s Court considered that although the good covered by the trademark application - “flat irons, electric” and its related products was in connection with clothing and suits that are covered by the cited marks in the way of use, they were different in terms of function, purpose, production sector, sales channel and targets, so they were not similar goods. The evidence submitted by Balenciaga cannot prove the cited marks were well-known before filing of the trademark application. The Trademark Registration Certificates filed by Balenciaga can only prove the ownership of trademark right but cannot prove the ownership of the copyright for the trademarks; the brochures made by Balenciaga cannot prove Balenciaga has the ownership of copyright for the “double B” device. Therefore, the TRAB’s decision was upheld.
The Beijing Higher People’s Court made the final decision on 11 April 2013 that the ascertainment of facts in the original judgment issued by the Intermediate Court was found to be clear and the application of law correct, so the original judgment was upheld.
- An application filed by the applicant to register a mark that is already in use by another party and has substantial influence, will not be approved (Article 31 of the PRC Trademark Law)
Tonglu Xin Heng Ji Travel Development Co., Ltd. (Xin Heng Ji) v. TRAB & Han Bi Lou Co., Ltd.
Xin Heng Ji applied for registration of “Han Bi Lou in Chinese” trademark (No.3262738) in respect of accommodation bureaux [hotels, boarding houses], catering (food and drink –), cafes, canteens etc. in class 43. A Tainwan company – Han Bi Lou filed an opposition against the application based on the cited mark “Han Bi Lou in Chinese” which was not registered in the mainland China. The CTO accepted the opposition and decided to reject the trademark application on 4 September 2006.
The TRAB considered that the evidence filed by the opponent cannot proved that its trademark “Han Bi Lou in Chinese” was a well-known trademark, however, the TRAB confirmed that the applicant had known the cited mark but it still applied for registration of “Han Bi Lou in Chinese” in bad faith. Consequently, the TRAB decided to reject the trademark application on 28 June 2010.
The Intermediate Court upheld the TRAB’s decision. Firstly, the cited mark “Han Bi Lou in Chinese” had been used and registered in Taiwan since 1999, and a large number of Chinese tourists stayed in Han Bi Lou Grand Hotel before filing of trademark application, so it was well-known for Chinese people. Second, the legal representative of Xin Heng Ji was a Taiwaness, so he definitely knew the cited mark, and the applicant engaged in the same industry with the opponent. This decision was supported by the Higher Court on 3 April 2013.