Use of registered mark beyond scope of protection held to infringe L'Oréal mark

China

The Shanghai Minhang District People’s Court has held that use of the mark MYBELIVE, which is registered for cleaning products, infringes L'Oréal's MAYBELLINE mark if it is used for cosmetics.

L'Oréal is the owner of several trademarks in the People's Republic of China, including: 

  • MAYBELLINE;
  • WATERSHINE; and
  • UNSTOPPABLE.

All these marks are registered for goods in Class 3 of the Nice Classification, including cosmetics.

Shanghai Zhuang Yan Cosmetics Co Ltd (SZYC) distributed cosmetic products bearing the marks MYBELIVE and WATER SHINE, as well as the combined trademark UNSTOPPABLE.

SZYC applied for the registration of the trademark MYBELIVE in Class 3 for “washing powder, cleanser”. The registration was granted by the Trademark Office on April 14 2010.

In May 2011 L'Oréal sued SZYC before the Shanghai Minhang District People’s Court, claiming that:

  • the mark MYBELIVE was similar to its registered trademark MAYBELLINE (Registration 212780); and
  • use of MYBELIVE for cosmetics constituted trademark infringement.

On November 16 2011 the Shanghai Minhang Court found that the mark used by SZYC was confusingly similar to L'Oréal's registered mark, and that such use constituted trademark infringement. The court also found that the use of the enterprise name 'US Mei Bao Lian Cosmetic Company' constituted an act of free-riding on L'Oréal's reputation and, therefore, an act of unfair competition.

The court ordered SZYC to cease the infringing acts and to pay Rmb120,000 in damages.

This decision implements the "Judicial Interpretation on Several Issues on the Trial of Cases Concerning the Conflict between Registered Trademarks, Trade Names and Prior Rights", published by the Supreme People’s Court on February 18 2008.

Relying on Article 1§2 of the judicial interpretation, the court upheld L'Oréal's claim that, although the trademark MYBELIVE was registered for cleaning products in the same class as the MAYBELLINE mark, use of MYBELIVE for cosmetics created a conflict with L’Oréal's trademark. L’Oréal did not have to file an administrative action for the cancellation of MYBELIVE prior to starting the civil action.

The meaning of the MYBELIVE mark and the graphic elements of SZYC's UNSTOPPABLE mark do not constitute an obstacle to the determination that these marks are similar to L’Oréal's MAYBELLINE and UNSTOPPABLE marks.

Charles Feng and Paul Ranjard, Wan Hui Da Law Firm & Intellectual Property Agency, Beijing

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