With a recent decision, the Beijing Higher People's Court recognized that "OMO 奥妙" brand is widely known to the public in relation to laundry detergents and thus it can be protected as well-known trademark under Article 13.3 of the Trademark Law.
Article 13 of the Trademark Law aims to provide well-known trademark owners with strengthened protection. Generally, normal trademark owners are being protected for similar or identical trademark over similar goods/services, while well-known trademarks can be protected over dissimilar goods/services (the so-called cross-class protection).
Whether cross-class protection can be granted depends mainly on the degree of well-knownness of the claimed well-known trademark, the likelihood of consumer confusion and other circumstances that may infringe the interests of the registered owner of the well-known trademark.
The "OMO奥妙" case is a typical example showing the requirements of reaching a well-known status of a registered trademark. "OMO奥妙" is a brand of fabric detergent owned by Unilever (the plaintiff), which entered the Chinese market in the early 1990s and has been known to Chinese consumers for nearly three decades.
| Disputed Trademark | Cited Trademark | |
| Trademark |  |
 |
| Trademark Number | No. 12156179 | No. 1317644; 1508212 etc. |
| Applicant | Wuxi Lianhua Daily Use Technology Co., Ltd. | UNILEVER IP HOLDINGS B.V. |
| Class | 11 | 3 |
| Goods | Electric heating installations; heating elements; heating plates; solid, liquid, gaseous fuel heaters; burners; germicidal burners; water heaters; evaporators; heating units | Laundry detergents, laundry (detergent) agents and materials |
In 2018, Unilever has filed an invalidation application against the copycat trademark "奥妙" registered in Class 3. After examination, the CNIPA held that the goods such as "electric heating device" approved for use by the trademark in dispute were different from "laundry detergents, laundry agent and materials", and thus should not cause confusion among relevant consumers.
The CNIPA rejected the request of invalidation and confirmed that the registration of the disputed trademark should not constitute the situation referred to in Article 13.3 of the Trademark Law.
Unilever was dissatisfied with the decision and appealed the case to the Beijing IP Court. The Beijing IP court reversed the CNIPA's decision and confirmed that the cited trademark has reached the level of well-known.
The disputed trademark has copied the cited trademark and although the designated goods of disputed trademark and cited trademark are not similar according to the classification, but these goods are relevant because they are all daily supplies. Thus, the use of the disputed trademark is likely to make the relevant public to link the disputed trademark with the plaintiff's cited trademark. Therefore, the registration of the disputed trademark violated Article 13.3 of the Trademark Law.
However, the case was not closed. The CNIPA, dissatisfied with Beijing IP Court's decision, appealed to Beijing Higher People's Court, and the Beijing Higher People's Court has upheld the first instance's decision, finding that the evidence submitted by Unilever proved that the registration of the disputed trademark violates Article 13.3 of the trademark law.
Below is a list of evidence that has been filed to the CNIPA and courts.
CNIPA
- Introduction of the brand
- Related statements and trademark information
- Relevant reports and website
- Search reports from the National Library
- Industry standards for related products
- Relevant sales invoices
- Other relevant evidence
Beijing IP Court
- An invalidation decision proving that the CNIPA has recognized the Cited Trademark (No. 1317644) as a well-known trademark on Laundry detergent.
- Advertisements of "OMO 奥妙" products
- Trademark information of the trademark registrant
- Photos of the products
- Relevant audit reports
- Other relevant evidence
Beijing Higher People's Court
- A "Protection List" published by the Trademark Office in June 2000 showing that the trademark "奥妙OMO" was given priority protection on detergents.
- A Search Report issued by the Science and Technology Research Centre of the National Library on 23 May 2018
- Copies of sales invoices of Unilever
- MSA decisions
- Other relevant evidence
The Beijing Higher People's Court has found that prior to the filing date of the disputed trademark, Unilever had conducted a long-term and continuous promotion and sales of laundry detergents with its "OMO 奥妙" brand. Thus, the cited trademark has become widely known to the public and should be recognized as a well-known trademark.
Although the goods approved by the disputed trademark, such as "electric heating devices and heating plates", and the designated goods of cited trademark "laundry detergents" are not similar goods, their sales channels and consumer groups are overlapped.
Thus, the coexistence of these trademarks will easily lead confusion among relevant consumers. The registration and use of the disputed trademark weaken the distinctiveness of Unilever's well-known trademark.
Consequently, the submitted evidence proves that the cited trademark was widely known to the public before the filing date of the disputed trademark, and should be recognized as a well-known trademark over goods of "laundry detergent" under Article 13.3 of the Trademark Law.
HFG Comments
Chinese Trademark Law does not define precisely "well-known trademark", but only implies that a well-known trademark should be extensively used and advertised, and should enjoy a high reputation over designated goods in continental China.
An unregistered well-known trademark in China can be protected under Article 13.2 for the goods that are identical or similar to the goods for which the well-known trademark is famous for. For a well-known trademark that is already registered (Article 13.3), the special range of protection can be granted over different classes, which is also called cross-class protection.
How wide the cross-class can be reached usually depends on the reputation of the trademark; the higher the reputation, the greater the scope of protection. The above second instance decision also highlighted that "the protection of a well-known trademark should take into account its own popularity and distinctiveness, and that for well-known trademarks with high popularity and distinctiveness, a wider protection should be granted".
In sum, Article 13.3 of the Trademark Law for cross-class protection is interpreted in the context of each individual case, and the scope of cross-class protection is dynamic and is determined in the context of the evidence in a particular case.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
