Hermès successfully prevents registration of copycat mark

China

A recent decision of the Trademark Review and Adjudication Board (TRAB) has shown the importance of establishing that there is a connection in the minds of consumers between a foreign name in Latin characters and its Chinese transliteration, as the scope of protection of one mark can be extended to another mark, and vice versa. 

Hermès, whose history goes back more than 170 years, is one of the most famous luxury brands worldwide. It has 17 product lines, including bags, silk scarves, neckties, clothing for men and women, and artwork. Headquartered in Paris, Hermès owns boutiques all over the world.

In China, the name 'Hermès' is registered in Latin characters, with or without a logo, and in Chinese (traditional and simplified) characters. Hermès owns the mark HERMES, as well as the following marks:

  • HERMES in traditional Chinese characters (No 2021326, applied for in 1996 and registered in 2003) (cited mark 1):

  • HERMES in simplified Chinese characters (No 2020629, applied for in 1997 and registered in 2003) (cited mark 2):

Both are used for clothing, shoes and hats in Class 25 of the Nice Classification.

Hermès also owns the following trademarks:

  • HERMES and device (No 76079, registered in 1983) (cited mark 3); and 

  • HERMES and device (No 248937, registered in 1986) (cited mark 4).

Cited marks 3 and 4:

Both are used for hosiery, scarves, gloves and clothes in Class 25.

On December 2 2004 Suzhou SHENG YI MA Garment Co Ltd applied for the registration of the trademark GEORGE HERMES in traditional Chinese characters:

The mark reproduced Hermès’ HERMES mark in traditional Chinese characters, but is slightly different from the Hermès brands. It designates “hats, layettes, bathing suits, shoes, clothing, hosiery, gloves, neckties, girdles and rain coats” in Class 25.

In September 2008 Hermès filed an opposition against this mark.

In March 2011 the China Trademark Office found that the opposed mark and the opponent’s cited marks were similar for hats, shoes and clothing. The Trademark Office thus refused to register the mark for these goods; however, it approved the registration of the mark for the other goods.

On April 22 2011 Hermès filed an application for review with the TRAB based on the following grounds:

  1. Its HERMES marks are well known for handbags and suitcases, and the opposed mark is an imitation of its well-known marks;
  2. The opposed mark is similar to cited marks 1 to 4 and covers identical or similar goods; and
  3. The opposed mark infringes its prior rights in its trade name.

Hermès submitted a large amount of evidence concerning the promotion and use in China of its HERMES marks, as well as evidence of the well-known status of its marks.

On February 25 2013 the TRAB held that the goods covered by the opposed mark, which included layettes, bathing suits, hosiery, gloves, neckties, girdles and raincoats, are not similar to those covered by cited marks 1 and 2, but are similar to those covered by cited marks 3 and 4.

However, the TRAB reversed the Trademark Office’s on the following grounds:

  • The evidence submitted by Hermès showed that, through long-term promotion and use, a connection had been established in the minds of consumers between the marks HERMES and its counterpart, HERMES in Chinese characters.
  • Even though cited marks 3 and 4 consisted only of a word in Latin characters and a device, consumers would still perceive the word 'Hermès' as being the prominent part of the marks, due to their awareness of the link between the name Hermès and its Chinese transliteration.
  • Therefore, since the opposed mark consists of the words 'George' and 'Hermès' in Chinese characters and is thus similar to the Chinese counterparts of cited marks 3 and 4, the coexistence of both parties’ marks was likely to mislead consumers into believing that the goods originate from the same undertaking or from economically linked undertakings.

The TRAB thus found that the marks were similar and that the goods were identical or similar. It thus rejected the application under Article 28 of the Trademark Law.

The TRAB also affirmed that the evidence submitted by Hermès proved that the name Hermès in Chinese had gained a certain influence as a trade name for clothing, wrist watches, handbags and silk scarves. Considering that the opposed mark was similar to the trade name Hermès in Chinese and thus infringed Hermès’ prior rights in its name, the TRAB stated that the application violated the provisions of Article 31 of the Trademark Law.

Consequently, the TRAB decided to refuse registration of the opposed mark based on Articles 28 and 31 of the law.

With regard to Hermès’ first ground of opposition (ie, its HERMES marks are well known for handbags and suitcases, and the opposed mark is an imitation of its marks), the TRAB asserted that the reputation of Hermès’ trademarks had been taken into consideration when assessing the similarity of the opposed trademark and the cited trademarks. As the TRAB had decided not to allow the registration of the opposed trademark, it was unnecessary to decide whether Hermès’ trademarks are well known, as the marks had obtained sufficient protection in this case. 

In order to decide whether the marks were similar, the TRAB used an interesting method based on indirect comparison. It first stated that the opposed mark was similar to cited marks 1 and 2, but that the designated goods were dissimilar. It then stated that the opposed mark was not similar to cited marks 3 and 4, but that the designated goods were similar. The TRAB thus established a 'bridge' between the two series of marks, holding that the prominent parts of cited marks 3 and 4 were perceived by consumers as having a close connection with cited marks 1 and 2; it is this connection that allowed the TRAB to find that the opposed mark was similar to cited marks 3 and 4.

Furthermore, the TRAB upheld Hermès' claim that the opposed mark infringed its prior rights in its trade name, and confirmed that the mark HERMES in Chinese had gained a certain influence as a trade name. There are few precedents regarding the protection of foreign companies' trade names in China; therefore, it is of great significance that Hermès successfully protected its legal rights in the country.

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

Wan Hui Da represented Hermès in this case

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