Cross-class protection or All-class Protection for Well-known Trademark? – Lukfook Jewelries vs. China National Intellectual Property Administration

Source:广东君龙律师事务所|Author:Ice Tang|Publish time: 2021-03-01|31 Views

 

Lukfook Jewelries, unsatisfied with the administrative decision of China National Intellectual Property Administration (hereinafter referred to as “CNIPA” or “defendant”), which maintained the validity of the trademark 14331625 “

The first-instance court officially accepted the case on Apr. 15, 2019, and upon examination, issued a decision in favor of CNIPA on Sep. 25, 2019. Unsatisfied with the first-instance ruling, Lukfook appealed the ruling to Beijing Higher People’s court. Beijing Higher People’s court issued a final ruling on July 17, 2020, upholding the first-instance ruling.

Both parties dispute at the following two issues : 1. whether the disputed trademark violates Article 13 Paragraph 3 of the Trademark Law; 2. whether the application for registration of the disputed trademark violates Article 32 of the Trademark Law and infringes on the plaintiff’s prior trade name right.

Regarding Focus One, Paragraph 3, Article 13 of the Trademark Law stipulates that “Where a trademark for registration to be used on different or dissimilar goods is a copy, imitation, or translation of a well-known trademark of another party which has been registered in China, misleads the public, and may cause damage to the interests of the registrant of the well-known trademark, it shall not be registered and shall be prohibited from use.”

According to the above regulations, in order to apply the aforesaid Paragraph 3, Article 13, the following three requirements have to be met: 1) the cited trademark must be a well-known trademark that has been registered in China; 2) the disputed trademark constitutes the duplication, imitation, or translation of the cited well-known trademark; and the registration of the disputed trademark may easily lead to confusion or mislead the public, thereby damaging the interests of the cited trademark owner.

In the appeal, the Defendant argued that the cited trademark has been publicized and used to constitute a well-known trademark, and the registration of the disputed trademark on its approved goods may mislead the public and reduce the well-known degree of the cited trademark, thereby harming the interests of Luk Fook Group, so the registration of the disputed trademark violates the provisions of Article 13 Paragraph 3 of the Trademark Law of 2013 and shall be declared invalid.

Upon examination, the second-instance court believes that cross-category protection of a well-known trademark is different from full-category protection. Specifically, the basis for granting cross-category protection is that the protected trademark should enjoy the popularity and distinctiveness to a well-known level, so as to avoid damaging the legitimate rights and interests of its owner. In this case, it is a true fact that the trademark at issue has a good reputation and is well-known with respect to commodities such as “precious gold ornaments (jewelry)” and other commodities, and they have a high reputation before the application for registration of the disputed trademarks. However, the trademark at issue is used on products such as ” air suction machines, and pneumatic waste oil drainers”, which are substantially different from “pearls; jewelry” related to the cited trademark. They have obvious differences in functions, uses, consumer objects, consumption channels, etc., so it is not easy to cause the relevant public to misunderstand the source of the goods, or to have a wrong association with the relationship between Lukfook Group and Lukfook Electrical and Mechanical Services, and will not dilute the distinctiveness and damage the reputation of Lukfook’s “Lukfook” trademark.

Regarding Focus Two., whether the application for registration of the disputed trademark infringed the plaintiff’s prior trade name rights. Article 32 of the Trademark Law stipulates that “No trademark application shall infringe upon another party’s existing prior rights. Nor shall an applicant rush to register in an unfair manner a mark that is already in use by another party and enjoys substantial influence”. Among them, “prior rights” includes the rights and interests of prior trade names. Damage to the rights and interests of other people’s prior trade names refers to the application for the registration of the same or similar words as those previously used by others and a well-known trade name on the same or similar goods. Confusion and misidentification of the origin of the goods resulted in damage to the interests of the owners of the prior trade name.

The second-instance Judge pointed out, that in this case, although the identification part of the disputed trademark and the plaintiff’s business name both contained the word “Liufu”, the plaintiff failed to provide evidence to prove that the plaintiff’s “Liufu” business name was well-known in the ”

Therefore, the second-instance Judge found that the registration of the disputed trademark does not violate the provisions of Article 13, or Article 32 of the Trademark Law, and thus upheld the first-instance ruling in favor of CNIPA.