Court disregards Chinese Classification of Similar Goods and Services

The Nanjing Intermediate People's Court has found that metal studs in Class 6 are similar to plasterboard in Class 19.

Lafarge SA - a world-leading building material manufacturer - is the owner of the following trademarks:

• 拉法基 ('Lafaji' in Chinese) for “plasterboard for construction” in Class 19; and
• LAFARGE (and L device) for “metal construction materials” in Class 6.

These two trademarks have been used in China by Shanghai Lafarge Gypsum Construction Material Co Ltd, the subsidiary of Lafarge SA, for gypsum construction materials and metal studs over a long period of time.

In April 2004 a natural person named Zhao Qiangsheng applied to register the trademark 拉法基 ('Lafaji' in Chinese) for metal construction materials in Class 6. Lafarge SA opposed the application, but the Trademark Office rejected the opposition. The procedure is being reviewed by the Trademark Review and Adjudication Board.

In 2011 Lafarge SA discovered that a company called Nanjing Mei Shi Da Construction Materials Co Ltd was producing and selling metal studs bearing the trademark 拉法基. Mei Shi Da claimed that it acted under a licence granted by Zhao Qiangsheng. The packaging used by Mei Shi Da was very similar to Lafarge SA’s packaging, for the same kind of metal studs. Mei Shi Da also used the mark 拉法基 in its advertising.

In October 2011 Lafarge SA and Shanghai Lafarge jointly filed a civil lawsuit against Mei Shi Da with the Nanjing Intermediate People's Court, alleging trademark infringement and unfair competition.

In its judgment, the court found that, according to the Chinese Classification on Similar Goods and Services, metal studs and plasterboards fall within two different classes of goods (6 and 19). However, the products are always used together to make ceilings and wall partitions. Their consumers, sales channel and manner of use are also similar. Therefore, metal studs and plasterboards are similar goods, and the defendant’s use of the trademark 拉法基 on its metal studs infringed Lafarge SA’s registered trademark 拉法基 in Class 19.

Moreover, the court found that Lafarge SA had established a link between the marks 拉法基 and LAFARGE by using them together in the market. Therefore, the defendant’s use of 拉法基 also infringed the plaintiff’s LAFARGE (and L device) mark. Finally, the court found that the defendant’s use of the plaintiff’s trade name 拉法基 in advertising and on its packaging took advantage of Lafarge SA’s reputation and constituted unfair competition.

In this case, the court disregarded the restriction set by the Chinese Classification on Similar Goods and Services by deciding that plaster boards and metal construction material are similar. This decision will be used to support the review of the opposition to the registration of the trademark 拉法基 in Class 6.

Shuhua Zhang, Wan Hui Da Law Firm & Intellectual Property Agency, Beijing

Wan Hui Da represented Lafarge SA in this case