Figurative mark containing Chinese characters held to be similar to purely figurative mark

The Beijing Higher Court has upheld a decision of the Beijing Number 1 Intermediate Court in which the latter had found that a figurative trademark containing the word element '达诺' ('Da Nuo' in Chinese characters) was similar to a purely figurative mark owned by Compagnie Gervais Danone SA.

Danone is one of the leading food companies in the world. It owns a series of DANONE trademarks (in Latin script and Chinese characters) in Class 29 of the Nice Classification, including:

• mark No G892944 (cited mark I):
  
• mark No 4418382 (cited mark II):
  
• mark No G849889 (cited mark III):
  

These marks enjoy a high reputation in China due to their continuous and longstanding use.

On July 25 2008 Anhui Da Nuo Dairy Industry Co Ltd (Da Nuo) filed an application for the registration of the following mark (No 6862689) in Class 29:

The mark was registered on March 28 2010.

On June 4 2010 Danone filed an action before the Trademark Review and Adjudication Board (TRAB) for the cancellation of Da Nuo's mark under Article 28 (prohibition to register marks that are identical or similar to a registered trademark), Article 13.2 (prohibition to register marks that constitute a reproduction, imitation or translation of a well-known trademark) and Article 10.1.8 (prohibition to register signs that may have "unhealthy consequences") of the Chinese Trademark Law.

On February 22 2012 the TRAB rejected the action, deciding to maintain the registration of the disputed mark.

With regard to Article 28, the TRAB held as follows:

• The disputed mark and cited marks I and III exhibited certain differences in term of composition, pronunciation and visual effect.
• Although the identifying parts of the disputed mark and cited mark II both contained the Chinese character 'da', there were differences between 'Da Nuo' in Chinese and 'Danone' in Chinese in terms of pronunciation and overall appearance.
• 'Da Nuo' in Chinese is identical to Da Nuo's trade name. The evidence submitted by Danone was insufficient to prove that the coexistence of the disputed mark with its own trademarks on the market was likely to cause confusion and misidentification as to the origin of the goods among the relevant public. Thus, the disputed mark did not violate Article 28 of the Trademark Law.

Furthermore, Danone’s claims based on Articles 13.2 and 10.1.8 were held to be unfounded.

On July 23 2012 Danone appealed to the Beijing Number 1 Intermediate Court. The court upheld Danone’s claims based on Article 28 of the Trademark Law and, on November 19 2012, issued a judgment revoking the TRAB's decision. The court held that the disputed mark was similar to cited mark I in terms of design, and was similar to cited marks II and III not only in terms of design, but also in terms of pronunciation, composition and overall structure.

The TRAB and Da Nuo appealed to the Beijing Higher Court.

On May 14 2013 the court upheld the judgment of the first instance court, confirming the similarity of the marks.

The court's finding that the disputed trademark was similar to cited trademarks II and III was unsurprising, due to the similar structure and pronunciation of the signs. However, the finding that the disputed trademark and cited trademark I - which consists only of a blue frame - were similar can be seen as a breakthrough. Reading between the lines, the decision established that:

1. cited mark I is distinctive, even though it consists of a simple frame;
2. because of such distinctiveness, the mark can be recognised separately, even if other signs appear inside; and
3. even though the disputed mark contained another component (ie, the Chinese characters 达诺), it could still cause confusion among the relevant public.

Yu Shuang, Wan Hui Da Law Firm & Intellectual Property Agency, Beijing

Wan Hui Da represented Danone in this case