TRAB; Liu Jia (a Chinese person, as the third party) vs. Zippo Manufacturing Company (Zippo)
Liu Jia filed an application with the CTO on 14 March 2003 for registration of the ZIPPO trademark (Application No.3486817) with regards to various services in class 35, such as advertising and sales promotions for others. Zippo filed opposition proceedings against this application based on its prior registered ZIPPO marks, registered under Registration No.347274 with regards to lighters in class 34 and under Registration No.235541 with regards to liquid gas for lighters in class 4. Given that the services listed in Liu Jia’s application were obviously different to the goods included in Zippo’s prior registrations, the key issue for Zippo, was whether its mark is “well-known” in China, so as to allow protection in relation to dissimilar goods and services. The CTO and TRAB did not accept Zippo’s claims that its ZIPPO mark was well-known in China and rejected the opposition proceedings.
Zippo appealed to the Beijing No.1 Intermediate People’s Court on the grounds that the ZIPPO mark was well-known in China and the filing of the trademark application infringed its copyright in its ZIPPO device and its business name. The Intermediate Court concluded that the evidence filed by Zippo with the TRAB and the court, proved that its ZIPPO mark registered on lighters had been extensively used for many years in China and well before filing of the trademark application – of particular importance was the fact that Zippo was able to show that it had taken steps in China to protect its ZIPPO mark from infringers and counterfeiters. The court concluded that the ZIPPO mark had obtained high reputation and influence among relevant public, and therefore it constituted a well-known mark referred as per Article 13(2) of the Trademark Law. The court went on to note that the trademark included in the trademark application was completely the same as the above well-known mark, so that it constituted a copy and imitation of the well-known mark. Further, the court found that the advertising and sales promotion services covered by the trademark application were closely related to the daily operation of all kinds of market operators, and that consumers would most likely associate the provider of these services with Zippo given how well-known Zippo’s ZIPPO was, leading to confusion. However, in relation to the copyright claim, the court felt that Zippo’s ZIPPO mark, was not creative or substantial enough to qualify for protection as an artistic or literary work under the PRC Copyright Law, thus that part of the claim was rejected.
The TRAB appealed to Beijing Higher People’s Court on the grounds that the evidence filed by Zippo with the TRAB was insufficient to prove that the ZIPPO mark had become well-known before the filing of the trademark application, and that advertising services were not related to lighter goods, such that confusion was unlikely. The Higher Court issued its decision on 19 June 2013. It concluded that the evidence filed by Zippo with the TRAB and the Intermediate Court, including its advertising of ZIPPO lighters in China, online promotional materials, advertising fee invoices, ZIPPO product catalogs, photographs of ZIPPO sales counters across China, Zippo’s sales analysis, and third-party research reports, proved that the ZIPPO mark was well-known in China. The evidence filed by Zippo including the punishment decisions issued by AICs, criminal decisions issued by courts, photographs of seized infringing products and media press on fake ZIPPO lighters investigations proved that the mark had been actively protected by the Chinese authorities. The evidence referred to above, as well as the National Important Trademark Protection List issued by the CTO in June 2006 in which the ZIPPO mark was listed, proved that the ZIPPO mark become well-known prior to the filing of the application. Regarding the goods/services, the court held that although the advertising and sales promotion services covered by the trademark application were different to lighters covered by the ZIPPO mark registrations owned by Zippo, the use of the ZIPPO mark by the applicant with regards to advertising and sales promotion services, would most likely weaken the distinctiveness of Zippo’s ZIPPO mark and confuse the public.