Court recognises well-known status of ZIPPO mark to block pre-emptive registration

The Beijing Higher Court has upheld a decision of the Beijing Number 1 Intermediate Court finding that ZIPPO was a well-known trademark for lighters. It recognised that ZIPPO benefited from the protection afforded to well-known trademarks in order to block the pre-emptive registration of the mark for advertising services.

Zippo Manufacturing Company is a world-famous lighters manufacturer. In China, Zippo owns the following trademark registrations (pictured below):

• ZIPPO (Registration No 347274), filed on June 14 1988 and registered on April 30 1989, covering lighters in Class 34 of the Nice Classification; and
• ZIPPO (Registration No 235541), filed on February 7 1985 and registered on October 30 1985, covering liquefied gas for lighters in Class 4.

On March 14 2003 a natural person, Liu Jia, filed an application for the registration of the trademark ZIPPO (No 3486817) for services including advertising in Class 35:

Zippo filed an opposition against the application, but was unsuccessful before the Chinese Trademark Office (CTMO). Zippo appealed to the Trademark Review and Adjudication Board (TRAB), which upheld the decision.

Zippo then appealed to the Beijing Number 1 Intermediate Court based on Article 13.2 of the Trademark Law (well-known trademarks). Zippo submitted evidence - in addition to the evidence already produced before the CTMO and the TRAB - to prove the use and reputation of its ZIPPO mark.

On September 19 2012 the Beijing Number 1 Intermediate Court ruled as follows:

• The evidence submitted by the plaintiff proved that the trademark ZIPPO, registered for "lighters", had been widely used and advertised over a long period of time, and had become famous and popular among the relevant public, therefore meeting the requirements set forth in Article 13.2 of the Trademark Law.
• The opposed trademark was identical to Zippo's trademark; hence it constituted a copy and imitation of the well-known trademark.
• The services covered by the opposed trademark included "advertising", "import-export agencies" and "sales promotion for others", which have a close connection with all kinds of daily operational activities of the market at issue. Evidence adduced by the plaintiff was sufficient to prove that the trademark ZIPPO is well known and that the relevant public consists of the average consumers.
• If the opposed trademark were used for the designated services, the average consumers would be likely to associate such services with the plaintiff, which may lead to confusion and cause damage to the plaintiff’s interests.

The Beijing Number 1 Intermediate Court thus cancelled the decision of the TRAB.

The TRAB appealed to the Beijing Higher Court, which decided to maintain the judgment of the first instance court based on the same facts and grounds.

In its ruling, the Beijing Higher Court confirmed that:

“the law does not prohibit the administrative counterpart (a litigant other than administrative agencies in an administrative litigation) from submitting, in the course of the litigation before the court, additional evidence to supplement the evidence submitted during the administrative proceeding. Such additional evidence, if submitted, should not necessarily be excluded by the court.”

Zippo’s additional evidence was thus accepted, and it played a key role in demonstrating the reputation of the ZIPPO marks.

The court recognised that ZIPPO benefited from the protection afforded to well-known trademarks, thus blocking the pre-emptive registration of the mark for services in Class 35 by using the theory of 'dilution'. This theory aims to safeguard the interests of trademark owners and prevent bad-faith trademark applications.

This is the first time that ZIPPO has been recognised as a well-known trademark for lighters in administrative litigation proceedings.

The decision is also significant in that the court confirmed that the additional evidence submitted during the litigation procedure before the court, in addition to the evidence already submitted before the CTMO and the TRAB, should not be excluded.

Li Yunquan, Wan Hui Da Law Firm & Intellectual Property Agency, Beijing

Wan Hui Da represented Zippo in this case