Decision signals more lenient approach to establishing fame of foreign marks

Despite the cost, it can pay for international trademark owners to appeal unfavourable decisions by the Chinese Trademark Review and Adjudication Board (TRAB) to the courts.

The decision of the Beijing Number 1 Intermediate People’s Court in the HAAGER-DASZ case signals a more lenient approach by the courts to establishing the fame of a foreign mark in China and a harsher approach to local squatters of internationally famous trademarks. This is in line with the study of the court reported in a press conference on December 3 2012. 

On appeal, the court rejected an application filed in 2003 by a local clothing manufacturer for the mark HAAGER-DASZ in respect of clothing in Class 25 of the Nice Classification in view of the fame in China of the HAAGEN-DAZS brand of ice-cream. The US owner of the trademark, General Mills Marketing Inc, opposed the acceptance of this mark. As General Mills’ HAAGEN-DAZS mark is used for dissimilar goods - ice-cream and other confectionery - and is registered for those goods in Class 30 in China, the opposition was argued on the basis of the fame and reputation of the HAAGEN-DAZS mark in China.   

The opposition was refused on an earlier appeal to the TRAB, which applied the onerous standards for proving fame of a foreign mark in China. The TRAB held that the evidence was not sufficient to show that the HAAGEN-DAZS mark had sufficient exposure in China to warrant well-known status. Although Häagen-Dazs had opened several stores in China selling its ice-cream and other confectionery, including Chinese moon cakes which had been well received by the public, this was not considered sufficient to render the mark famous in China.    

In overturning the decision, the court said that, “when determining whether a trademark is well known, judges should use not only quantitative methods to measure its market share, but consider overall factors from a general consumer’s point of view”. The court also showed that it would not tolerate obvious squatting on internationally famous marks and noted that, in the present case, “the clothing manufacturer made only minor changes to the wording of the mark. Its intention is obviously malicious”.

Sandra Gibbons, Marks & Clerk Hong Kong, Hong Kong