Lafarge stops pre-emptive registration based on prior trade name
Article 32 of the 2013 version of the Trademark Law provides as follows:
“An application for trademark registration shall not be allowed to harm another person’s prior rights, and no pre-emptive application by any unfair means for a trademark which has been used by another person and has a certain influence shall be allowed for registration.”
Established in 1833, Lafarge Société Anonyme is a world leader in building materials, with its business operation network covering China and 74 other countries and regions around the world. Its main products include cement, concrete, aggregate, gypsum building material, roofing system and related building products. Lafarge is ranked at the top of this industry around the globe.
Lafarge registered the trademarks LAFARGE, LAFARGE (in Chinese character) and LAFARGE (and device) in several classes with the China Trademark Office (CTMO).
On March 19 2012 a Chinese individual, Mr Wang, applied for the registration of the trademarks LAFARGE (in Chinese) (No 10636173, see Image I) and LAFARGE (No 10636172, see Image II) for the following goods: “emery paper; furbishing preparations; sandpaper; abrasives; rubbing emery; sharpening preparations; nail varnish; air fragrance preparations; polish for furniture and flooring; sand cloth (abrasive cloth)” in Class 3.
On February 13 2013 both trademarks were preliminarily approved by the CTMO.
On March 21 2013 Lafarge filed oppositions against the above trademarks with the CTMO, citing its prior trademark registration in Class 19 and its prior right in the word 'Lafarge', both in Latin and Chinese characters, recorded as the name of the company.
On April 13 2015 the CTMO made the decisions not to approve the registration of these two marks, citing the opponent’s prior trade name rights.
In the decisions, the CTMO held that the opponent’s trade name Lafarge, in Chinese and Latin characters, had been created by the opponent and had a strong originality. The submitted evidence proved that Lafarge, in Chinese and Latin characters, was a trade name with a high reputation among the relevant consumers for cement, concrete and related building material. The opposed trademarks consisted of Chinese or foreign characters identical to Lafarge’s trade names. The goods “polish for furniture and flooring; abrasives” had a close association to Lafarge's products. The registration and use of the opposed trademarks infringed the trade name rights of the opponent and violated Article 32 of the Trademark Law. Therefore, the opposed trademarks should not be approved for registration.
The Trademark Review and Adjudication Board (TRAB) has explicitly elaborated in its official newsletter on the pre-requisite for invoking the protection of a prior trade name: “The cited trade name shall have a certain reputation among the relevant consumers in China; the registration and use of the disputed trademark must be likely to cause confusion among the relevant public, which could be detrimental to the interests of the owner of the prior trade name”. The TRAB added that, “in principle, in order to adopt the aforesaid examination criterion, the designated goods or services provided by the trade name owner and those covered by the disputed trademark shall be identical or similar”.
Nevertheless, it would be advisable to interpret the similarity of the goods/services of the parties as mentioned above as an “optional clause”, because the protection of a prior trade name should aim to avoid confusion among consumers and prevent damage to the interests of the owner of the prior trade name. In light of the diversification of modern enterprises and the fact that consumers are used to such reality, if the prior trade name is of high reputation and the disputed mark has obviously been filed with bad faith, it would be reasonable to extend the protection of a prior trade name to goods/services that are closely associated with the trade name owner because the registration of trademarks for such goods or services is likely to cause confusion among the relevant public and damage the interests of the trade name owner.
In the present case, the CTMO also took into account the originality of the opponent’s prior trade name. Therefore, the following factors would be worth considering when invoking protection over a trade name:
- the originality of the prior trade name;
- the similarities between the trade name and the trademark;
- the association between the goods involved; and
- the reputation of the trade name itself.
Liu Xinrui, Wan Hui Da Intellectual Property Agency, Beijing
Wan Hui Da represented Lafarge in the opposition proceedings
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