Protection of foreign marks reinforced

China
In four cases involving international companies, the Beijing First Intermediate People’s Court has considered the issue of how foreign trademark owners can protect their marks in the Chinese market. Chinese characters are monosyllabic and many characters with different meanings have the same pronunciation. Therefore, a multisyllabic foreign mark can be transliterated into many combinations of Chinese characters. To what extent can foreign trademark owners prevent others from riding on their reputation by adopting Chinese marks that sound similar to theirs? Some principles can be gleaned from the four recent decisions.

In the first case, Procter & Gamble Company (P&G) successfully prevented the registration of HU-SHI-BAO based on its registered trademark HU-SHU-BAO (March 27 2009, published on July 3 2009).

P&G's Whisper line of feminine hygiene products are marketed in China under the registered trademark HU-SHU-BAO (meaning 'protect-comfortable-treasure'). A Chinese company applied to register the mark HU-SHI-BAO ('nurse-treasure') for similar goods. The application was allowed by the China Trademark Office. Following an unsuccessful opposition, which was affirmed by the Trademark Review and Adjudication Board (TRAB), P&G filed an administrative action seeking revocation of the decision. 

Before the court, the TRAB and the Chinese company argued that the meanings of the Chinese characters were different and that the marks were dissimilar. The Beijing First Intermediate People’s Court (which handles appeals from TRAB decisions) held that since the beginning and end characters of the parties’ three-character marks were identical and the middle characters sounded similar, the marks were also similar. As the Chinese company's goods were similar to those protected by P&G's mark, the TRAB had erred in allowing the registration of HU-SHI-BAO. The decision of the TRAB was thus revoked.

In the second case, Michelin successfully prevented the registration of the Chinese-character mark MI-QI-LIN based on its registered Roman-character mark MICHELIN (March 20 2009, published on July 3 2009).

Michelin opposed the registration of the Chinese-character mark MI-QI-LIN for clothing in Class 25 of the Nice Classification, claiming that:
  • the mark applied for was similar to its Chinese-character mark MI-QI-LIN, which is registered for tyres in Class 12; 
  • its Chinese mark MI-QI-LIN is well known in China and, therefore, should be accorded extensive protection under the Paris Convention for the Protection of Industrial Property; and
  • the mark applied for was similar to its registered Roman-character mark MICHELIN in Class 25. 
The opposition was unsuccessful before both the office and the TRAB. The TRAB held that the first ground of opposition could not be sustained, as clothing and tyres are different goods and confusion was thus unlikely. The second ground was also unsuccessful because Michelin's evidence demonstrated the reputation of the MICHELIN mark outside of China. Moreover, Michelin had failed to show that the mark was well known in China before the filing date of the opposed mark. As for the third ground, the TRAB held that since Michelin’s Class 25 registration was in Roman characters, while the opposed mark was in Chinese characters, confusion was unlikely.

Michelin filed an administrative action before the Beijing First Intermediate People’s Court. The court concurred with the TRAB’s findings regarding the first and second grounds of opposition. However, it held that since the MICHELIN mark will be pronounced in Chinese as 'mi-qi-lin', which is identical to the pronunciation of the mark applied for, confusion on the part of the public was likely. The TRAB’s decision was thus revoked.

In the third case, Honda successfully prevented the registration of the Chinese-character mark HONG-DA based on its registration for the Roman-character mark HONDA (unpublished).

Chinese company Lifan applied to register the Chinese-character mark LI-FAN HONG-DA for land vehicles in Class 12. Honda opposed based on its Class 12 registration for the Roman-character mark HONDA. The opposition was unsuccessful before both the office and the TRAB. The TRAB held that the Chinese public was unlikely to associate the mark applied for with the HONDA mark because:

  • the Chinese-character mark adopted by Honda in China is pronounced 'ben-tian' (meaning 'origin-field'); and 
  • the last two characters of the opposed mark mean 'strike-reach' and are different from Honda’s Chinese mark from a visual point of view.
On appeal, the Beijing First Intermediate People’s Court revoked the TRAB’s decision, holding that there was a likelihood of confusion among the Chinese public because:
  • the mark HONDA has established a reputation in China for the relevant goods; and 
  • the characters 'strike-reach' in the opposed mark sound similar to the HONDA mark.
In the fourth case, Lea & Perrins failed to prevent the registration of the Chinese-character mark LI-PAI-LIN based on its registration for the Roman-character mark LEA & PERRINS (March 20 2009, published on July 3 2009).

Lea & Perrins uses the Chinese mark LI-PAI-LIN (meaning 'pear-distribute-forest') in China for sauces. It also owns a registration for the Roman-character mark LEA & PERRINS. A Chinese company applied to register the Chinese mark adopted by Lea & Perrins for "sauces, condiments, rice and edible starch". The office accepted the application. Lea & Perrins applied for review, claiming that its Chinese mark LI-PAI-LIN is well known in China. The TRAB held that the goods “rice and edible starch” are dissimilar to “sauces and condiments”, even though they all fall within Class 30. Although LI-PAI-LIN is phonetically similar to LEA & PERRINS, the evidence submitted by Lea & Perrins was insufficient to show that the mark LI-PAI-LIN was well known in China or had established a reputation in China beyond the goods “sauces and condiments”. The application was thus partially rejected in respect of "sauces and condiments", but partially accepted in respect of "rice and edible starch". On appeal, the Beijing First Intermediate People’s Court upheld the decision.

The principles emerging from these cases seem to suggest that if a foreign mark has earned wide recognition in China, its owner may be able prevent the registration of Chinese-character marks that are close transliterations of the foreign mark, even if the Chinese mark is different from a visual and conceptual point of view (see the HONDA Case). However, such protection is limited to goods for which the foreign mark is used and has established a reputation in China. Extension of protection to dissimilar goods is still an uphill battle where the evidence submitted by the foreign trademark owner is insufficient to establish that the mark is well known, even if the third-party mark is identical or almost identical to the Chinese mark adopted by the foreign trademark owner (see MICHELIN and LEA & PERRINS).
 
Rebecca Lo, Rebecca Lo & Co, Hong Kong

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