Reputation of earlier mark held to be major factor in determining similarity of goods

In a case involving the DETTOL mark, the Court of Appeal has held that the determination of the similarity of the goods must be made on a case-by-case basis, and must take into account both the nature of the goods and the reputation of the earlier mark. 

DETTOL (in Chinese) is a famous healthcare brand of Reckitt & Colman (Overseas) Ltd. In the 1990s DETTOL-branded products entered the Chinese market (ie, disinfectants, disinfectant soaps, aseptic liquid, body lotions and other personal care products).

Back in 1988, Reckitt & Colman had applied for the registration of several DETTOL trademarks (in Chinese), including:

• No 359400 for “sterilising preparations, pesticides, etc” in Class 5 of the Nice Classification (cited trademark I);
• No 359331 for “cotton wool, gauze, etc” in Class 5 (cited trademark II);
• No 361241 for “bleaching preparations, abrasion preparations” in Class 1 (cited trademark III); and
• No 548355 for “laundry preparations, soap, etc” in Class 3 (cited trademark IV).

Cited trademarks I, II, III and IV:

On September 25 2003 an individual, Zhong Xiji, from Guangdong Province, filed three trademark applications for DETTOL (in Chinese):

• No 3732182 for “abrasion preparations, potpourris, scented wood, shampoos for pets” in Class 3;
• No 3732183 for “paper, paper rag, paper handkerchiefs, paper napkins for removing make-up; paper towels” in Class 16; and
• No 3732184 for “crystal [glassware]; insect traps” in Class 21.

Opposed trademark:

Reckitt & Colman filed oppositions against the three applications with the China Trademark Office on the basis of Articles 10.1.8, 13.2 and 28 of the Trademark Law. The Trademark Office rejected the three oppositions. Reckitt & Colman appealed to the Trademark Review and Adjudication Board (TRAB), which upheld the Trademark Office’s decisions. Reckitt & Colman appealed to the Beijing Number 1 Intermediate Court, which also dismissed the appeal.

Reckitt & Colman appealed to the Beijing Higher Court, claiming as follows:

1. The trademark DETTOL (in Chinese) was created by Reckitt & Colman and is highly distinctive. Since the Dettol products were launched in the Chinese market, the trademark DETTOL has acquired a reputation in the country through extensive use and advertising. The assessment of the similarity of goods must take into account both the nature of the goods and the reputation of the prior trademarks, and ultimately turns on whether there is a likelihood of confusion among customers. Here, the goods covered by the opposed trademarks have a close connection with the goods covered by the cited trademark with respect to their function, use, channel of sale and customer base. Therefore, the registration of the opposed trademarks would cause confusion and misidentification among customers. The goods covered by the opposed trademarks should be considered as similar to those covered by the cited trademarks, and the first-instance court and the TRAB should have considered the reputation of the cited trademarks.
2. The mark DETTOL is a well-known trademark and the opposed trademarks are mere imitations; this harms the interests of Reckitt & Colman under Article 13.2 of the Trademark Law.
3. Zhong Xiji works in the field of daily chemicals in Guangzhou, where Dettol China was headquartered before the opposed trademarks were applied for. Zhong Xiji’s bad faith was thus obvious. In addition, Zhong Xiji had also preemptively registered several famous trademarks, such as the Chinese transliteration of 'Oral B'. Such behaviour fell under Article 10.1.8 of the Trademark Law.

At the second instance, Reckitt & Colman submitted a search report by the National Library of China covering the period from 1998 to 2003 to prove that its trademark DETTOL enjoyed a reputation in China before the filing date of the opposed trademarks. However, the court held that such evidence was admissible.

The court ruled that the determination of the similarity of the goods must be made on a case-by-case basis, and must take into account both the nature of the goods and the reputation of the prior trademarks. Taking into account the reputation of the cited trademarks, the court ruled that the goods covered by the opposed trademarks are similar to those covered by the cited trademarks. The court concluded that the registration of the opposed trademarks for the goods at issue was likely to cause confusion and misidentification as to the source of the goods. Therefore, the court found that the parties' trademarks and goods were similar, and that registration of the opposed marks was prohibited under Article 28 of the Trademark Law. The court thus overturned the first-instance judgment and the TRAB's decision.

According to Articles 11 and 12 of the “Interpretation of the Supreme People's Court on Certain Issues Concerning the Application of the Law in the Trial of Civil Cases Involving Trademark Disputes”, goods are similar (as mentioned in Item (1) of Article 52 of the law) where the relevant public believes that their functions, purposes, modes of production, sales channels and consumers have a particular association. This interpretation confirms that the concept of 'likelihood of confusion' is the relevant criterion for assessing the similarity of goods.

Since the assessment of the likelihood of confusion must take into consideration the reputation of the earlier registered trademarks, the Court of Appeal in the present case took into account the reputation of the cited trademarks and declared that, even if the goods covered by the opposed trademarks were not listed as being “similar goods” in the Examination Guidelines of the Trademark Office, they were similar to those covered by the earlier mark.

Hu Meili, Wan Hui Da Law Firm & Intellectual Property Agency, Beijing

Wan Hui Da represented Reckitt & Colman in the second-instance trial