Case No. 3: Trademark dispute between a famous coal-mining company and a private person

1. Background

The Kailuan Group, a major energy enterprise in Hebei province, applied for invalidation of Zhang Hongbin’s “Kailuan” trademark (registration No 5667073), because of Zhang’s alleged malicious infringement on the company’s trade name “Kailuan. Zhang had not actually used the name in business.

The Patent Reexamination Board determined that the evidence provided by the Kailuan Group did not show any operation of beauty salons, public baths, or similar businesses which were Zhang’s activities. They were unable to prove that they had gained a reputation in these services before applying to use the name as a trademark. So the Board supported Zhang’s trademark registration. The Kailuan Group refused to accept the decision and brought administrative proceedings to the Beijing IP Court.

2. Ruling

The Beijing IP Court ruled that Zhang’s registration of the “Kailuan” trademark did in fact infringe upon the Kailuan Group’s prior right of trade. As the Reexamination Board was in error, the court overturned its decision ([2014] No 71444, sub-number 5667073), and ordered the board to correct it.

Neither of the parties filed an appeal after this judgment, which has come into effect.

3. Significance

This case is based on the Trademark Law’s provision that “an application for the registration of a trademark shall not create any prejudice to the prior right of another person”; the prior right in this case was the right of trade name. The court’s judgment was made by analyzing when the plaintiff began trading under the name “Kailuan” (1912), the reputation of the Kailuan Group (it’s among the world’s top 500 enterprises and its trade name is famous in China and abroad), differences between the plaintiff’s business scope and the litigated trademark’s approved usage service, possible public confusion, and the litigated trademark registrant’s awareness and actual use of the plaintiff’s trade name to determine whether any prejudice to the Kailuan Group’s prior right had occurred. Based on those factors, the court found that the disputed trademark registration damaged the Kailuan Group’s prior rights and that the registration should be made null and void. This decision protected the rights of a famous brand, prevented malicious and preemptive trademark registration, and safeguarded the integrity of competition among market players.

Case No 4: Guizhou pharmaceutical company wins appeal on overturning administrative decision on its trademark application

1. Background

Tongjitang Pharmaceutical Co Ltd in Guizhou province applied for registration of a composed mark which included a trademark saying “Tongjitang was founded in 1888”, and its logo at the Trademark Office of the State Administration for Industry and Commerce. The Office and Trademark Review and Adjudication Board rejected the application on the grounds that the litigated trademark was similar to the trademark “Tongji” and its logo (a quoted trademark having registration No 3178271) and “Tongji” (another quoted trademark having registration No 3574839). Although the two quoted trademarks in the case look the same in pinyin, they are written in traditional Chinese characters and simplified Chinese characters respectively. They look different in the Chinese versions.

The company refused to accept the decision and brought appeal proceedings to the Beijing IP Court.

2. Ruling

The Beijing IP Court decided that the public will not muddle the litigated trademark and the two quoted trademarks. The former is not in the same or a similar commodity category with the latter two as based on the reputation of the company’s previous trademark “Tongjitang” (Registration No 1093180), the actual use of the litigated trademark, the similarity between the litigated trademark and the company’s previous trademark, as well as the difference between the company’s previous and composed trademarks, and the two quoted trademarks. The court canceled the previous decision and ordered the Trademark Review and Adjudication Board to correct it.

3. Significance

This case clarifies that evolution of the same subject’s previous trademark and the litigated trademark should be taken into account in judging their proximity, and discusses the factors that should be considered making that judgment. The court fully considered the reputation of the company’s previous trademark “Tongjitang” (Registration No 1093180), the actual use of the litigated trademark, the similarity between the litigated trademark and the company’s previous trademark, as well as the difference between the company’s previous and composed trademarks, and the two quoted trademarks. It held that the previous trademark’s reputation was inherited by the litigated trademark, which can be differentiated from the two quoted ones.

The decision of this case is of great significance in safeguarding interests of famous trademark holders.