Tag: well-known trademark

Chinese court decides that “IPHONE” is not a well-known trademark

Apple’s opposition against the “IPHONE” mark in Class 18

On October 18, 2002, Apple Inc. applied to register the “IPHONE” mark in Class 9 (computer hardware, computer software etc.) in China, which was approved on November 21, 2013.

On September 29, 2007, a local Chinese company Xin Tong Tian Di Company (“XTTD“) applied to register the “IPHONE” mark in Class 18 (leather, wallet, purse etc.) in China (“Disputed Trademark“).

After China Trademark Office (“CTO“) preliminarily approved the registration of the Disputed Trademark, Apple filed an opposition against it but the opposition was rejected by the CTO in 2012.

Then Apple applied for re-examination of the Disputed Trademark to China Trademark Review and Adjudication Board (“TRAB“). But the TRAB sustained the CTO’s decision on December 16, 2013.

Arguments of Apple

Apple argued that its “IPHONE” mark registered in Class 9 has gained high popularity and distinctiveness in China and therefore should be deemed as well-known trademark.

Since its launch of the IPHONE on June 29, 2007, it has launched 9 generations of IPHONE products and has been officially selling the IPHONE products in Mainland China since October 2009.

Based on the above, Apple applied to protect its “IPHONE” mark as a well-known trademark in China, which means, it should be protected in all Classes in China even if it has not been registered in a particular Class.

Opinion of the TRAB

The TRAB decided that Apple cannot prove that its trademark had become well-known in China before the application of the Disputed Trademark because its use of the trademark which can be supported by evidences submitted by Apple was all dated after the application date of the Disputed Trademark.

Despite that Apple’s “IPHONE” mark has high popularity on cell phones and relevant products, the current evidences were not sufficient to determine that the “IPHONE” mark had become a well-known trademark in China. It is not likely that the general public in China will associate the Disputed Trademark with Apple Inc.

Decision of the court

Apple appealed the TRAB decision to Beijing No. 1 Intermediate Court and then to Beijing Higher Court. Both courts decided that the “IPHONE” mark was not a well-known trademark before the application date of the Disputed Trademark because the IPHONE was first launched in June 2007 and was only officially sold in Mainland China in October 2009.

At the time of the application of the Disputed Trademark (September 29, 2007), the “IPHONE” mark was not well-known in China and therefore it cannot block the registration of the Disputed Trademark.

Accordingly, Beijing Higher Court finally rejected Apple’s appeal and affirmed the registration of the Disputed Trademark.

Comments from China Filing

Chinese laws do provide special protection to well-known trademarks. However, being recognized as a well-known trademark is not retrospective. Even if a trademark becomes well-known after massive use and promotion, at its early stage when it is not that “famous”, it cannot prevent others from registering the identical or similar trademark on irrelevant Classes (goods or services).

Big companies such as Apple should consider to register its major trademarks in all 45 Classes in China before its launch in China. The registration costs for all 45 Classes may seem to be very high, but it will save a lot of litigation costs in the future and can eventually protect its trademark in all Classes in China.

Victoria’s Secret wins back its domain names in China

Facts

Victoria’s Secret (hererinafter referred to as “VS“) starts to sell its products in China since 1997. It has registered or purchased the “VICTORIA’S SECRET” trademark in Class 39, 42, 3 and 25 in China in 1995, 1997 and 2011 respectively. VS registered the domain name “victoriassecret.com” and has been using such domain name for its official website.

In 1999 and 2003, a Chinese woman Madam Wang registered the domain names “victoriassecret.com.cn” and “victoriassecret.cn” in her own name and used such domain names to set up websites to publish commercial advertisement, promotion and social information.

VS found out that Madam Wang had squatted many famous brands including Nike, Converse, Dupont, P&G, L’OREAL etc., which had been judged as infringing by several Chinese courts.

VS claimed that Madam Wang’s registration of the disputed domain names could mislead the consumers in China that her websites were owned by VS and therefore has infringed its trademark right towards “VICTORIA’S SECRET” and has constituted unfair competition against VS.

VS asked the court to order Madam Wang to stop the infringement activities, transfer the disputed domain names to VS, and the pay the compensation of RMB 200,000 to VS.

Defense

Madam Wang defended that:

  1. she registered the disputed domain names in 1999 and 2003, at that time, VS did not even enter into the China market and therefore was not known to the Chinese people. She did not have any bad faith to register such domain names;
  2. the “VICTORIA’S SECRET” trademarks are not well-known trademarks in China and therefore her domain names cannot infringe the trademark right of VS;
  3. the company name of VS cannot be an obstacle for her to register the disputed domain names because they are irrelevant under Chinese laws;
  4. she is not obliged to pay any compensation to VS because she did not infringe the trademark right of VS.

Decision of the court

After hearing, the Chaoyang court in Beijing decides that:

  • the earliest registration date of the “VICTORIA’S SECRET” trademark owned by VS is earlier than the registration date of the disputed domain names owned by Madam Wang and the “VICTORIA’S SECRET” brand has enjoyed high popularity in China after long term marketing and promotion in China. As the result, VS’ trademark right towards the “VICTORIA’S SECRET” trademark should be regarded as prior legal rights which should be protected by the Chinese laws.
  • Madam Wang used the prior registered “VICTORIA’S SECRET” trademark with high popularity in China as the main part of her domain names. Such action could be misleading to the Chinese consumers and has taken advantage of the goodwill of VS. Further, such action has prevented VS from registering its trademark as .cn domain names in the most neat and complete form, which caused the failure of VS to use such domain names for commercial activities in China.
  • Madam Wang failed to prove that she enjoyed any legal rights towards the disputed domain names and did not reasonably use such domain names. Her action cannot be justified.
  • Madam Wang had several domain name disputes with internationally well-known companies before and she was determined as having bad faith by several Chinese courts. As such, it can be inferred that she had bad faith in registering the disputed domain names in this case.
  • Madam Wang’s action should be determined as an unfair competition against VS but did not infringe the trademark right of VS.

Finally, the Chaoyang court determines that Madam Wang should stop using the disputed domain names and compensate RMB 100,000 to VS for its economic loss and expenses. The disputed domain names should be owned by VS.

After the judgement, VS did not appeal and Madam Wang is still considering whether to appeal.