TRAB uses Article 28 of Trademark Law to resolve trademark dispute

A recent case involving the trademark NINA RICCI has demonstrated that the Trademark Review and Adjudication Board (TRAB) will disregard the China Trademark Office (CTMO) Classification in order to protect famous marks against dissimilar - but closely related - goods, and prevent bad-faith applications, in particular in the area of mass consumer goods.    

Nina Ricci, one of the world's leading fashion companies, is the owner of the trademark NINA RICCI for "clothing" in Class 25.

In April 2004 Song Guanghua, a natural person, applied for registration of the figurative trademark RICCI for “swimsuits; dancing dresses; running shoes” in Class 25:

Nina Ricci opposed the application, but the CTMO dismissed the opposition. Nina Ricci then appealed to the TRAB. 

In July 2012 the TRAB examined the case and held that:

• the goods designated by respective marks were similar, as they shared the same sales channels and target consumers; and
• the marks were similar, as NINA RICCI’s mark contained the opposed mark RICCI in its entirety.

Accordingly, the TRAB upheld the opposition, in line with Article 28 of the Trademark Law.    

According to the ninth edition of the CTMO Classification, “clothing” and “swimsuits; dancing dresses; running shoes” were dissimilar. However, the 10th edition, which came into effect in January 2012, recognised the similarity between “clothing” and “swimsuit; dancing dresses”.    

The present case is interesting in at least two respects. First, the TRAB chose the date of examination as the point in time for examining the facts and, accordingly, applied the 10th edition of the CTMO Classification; this may give IP rights owners more opportunities to attack offending marks filed under the ninth or earlier editions. Second, the TRAB applied more flexible criteria when examining the similarity of the trademarks and designated goods: it disregarded the CTMO Classification and recognised the similarity between the goods. Therefore, it seems that Article 28 of the Trademark Law might be a good alternative legal basis to resolve trademark disputes, rather than relying only on recognition as a well-known trademark to benefit from extended protection. 

The CTMO, the TRAB and the courts are taking different approaches concerning the CTMO Classification. Previously, the CTMO and the TRAB followed and applied the CTMO Classification strictly, while the courts regarded it only as a reference. However, the TRAB has recently been affected by the courts' position and its attitude on this point is evolving. According to the TRAB’s information in the Advanced Seminar Concerning Legal Practice of Trademark, held in Harbin in July 2012, the TRAB has developed a set of rule to decide when the CTMO Classification should be disregarded, which includes the following conditions:

1. The cited mark must have strong distinctive character/originality;
2. The goods covered by the disputed trademark and the cited mark must be closely related;
3. The cited mark must have a certain reputation;
4. The owner of the disputed mark must have filed the application in bad faith;
5. The disputed mark must be confusingly similar to the cited mark; and
6. The registration and use of the disputed mark would be likely to cause confusion among consumers.  

As it gains more experience in examining trademark disputes, the TRAB may apply these flexible criteria more frequently. Such practice will mean that the TRAB must balance the provisions of Article 13.2 and Article 28 of the Trademark Law. 

Wu Xiangrong, Wan Hui Da Intellectual Property Agency, Beijing

Wan Hui Da Intellectual Property Agency represented Nina Ricci in this case