China: Principles Of On-Demand Recognition Of Well-Known Trad-emarks And Consistent Law Application

---"YKK" Recognized as Well-Known Trademark by the Supreme People's Court

[Case]

(2016) No. 67 Retrial Judgement of the Supreme People's Court on Case of Administrative Dispute over Review of Trademark Opposition between the Retrial Applicant XX Co., Ltd. and the Respondent the Trademark Review and Adjudication Board of the State Administration for Industry and Commerce ("the TRAB"), the Third Party of First Instance, and the Appellee of Second Instance Rui'an Libo Motorcycle Parts Co., Ltd. ("Libo Company")

[Brief Introduction to the Case]

Libo Company applied to the Trademark Office of China for the registration of the trademark "YKK" on Mar. 23, 2004, and this trademark was designated to use on Class 12 goods "air pumps (vehicle accessories), upholstery for vehicle , automobiles, motor vehicle dampers", etc. XX Co., Ltd. objected this trademark, and considered that this trademark constituted the reproduction and imitation of its trademark "YKK" registered under Class 26 goods like zipper, etc. In December 2009, the Trademark Office made the Decision on the Opposition, and considered that the trademark "YKK" used by XX Co., Ltd. on the goods "zipper" had relatively high popularity, but the goods on which the two parties' trademarks were designated to use had distinctive differences in terms of function and use, etc., so the registration and use of the Opposed Trademark would not cause consumers' confusion on the source of goods generally. XX Co., Ltd. sued to the TRAB for opposition review. In March 2011, the TRAB made the Decision on Opposition Review, and approved the registration of the Opposed Trademark. XX Co., Ltd. was not satisfied with the Decision on Opposition Review, and lodged a complaint to Beijing No. 1 Intermediate People's Court ("Court of First Instance"). The Court of First Instance made a judgment on Dec. 18, 2012, and maintained the Decision on Opposition Review. The Judgment of First Instance considered that the goods on which Opposed Trademark was designated to use and the goods "zipper" on which the trademark "YKK" of XX Co., Ltd. was designated to use had very great differences in terms of function, use, production department, sales channel, consumption object, etc., and relevant public would not generally consider after seeing the Opposed Trademark that this Opposed Trademark had connection with the trademark "YKK" used by XX Co., Ltd. on the zipper goods, so it would not misguide the public and be detrimental to the benefits of XX Co., Ltd. Thereafter, XX Co., Ltd. filed an appeal to B-eijing Higher People's Court ("Court of Second Instance"). The Court of Second Instance dismissed the claims of XX Co., Ltd. after trial. The Court of Second Instance considered that for a well-known trademark already registered in China, its protection scope on non-similar goods shall be determined according to its well-known degree. Where the goods on which a well-known trademark is used and the goods on which the Opposed Trademark is used have by far great differences, the protection scope for this well-known trademark may not be expanded to the goods on which the Opposed Trademark is used.

After losing the lawsuit in the final trial of second instance, XX Co., Ltd. entrusted the CCPIT Patent and Trademark Law Office to start the retrial procedure of this case of administrative lawsuit for this trademark. After hearing procedure and trial procedure, the Supreme People's Court made a judgment beneficial to XX Co., Ltd., and affirmed that the trademark YKK was a well-known trademark used on zipper goods, the goods "upholstery for vehicle" on which Opposed Trademark was designated to use had relatively high relevance with the zipper goods, and the trademark YKK could obtain protection on "upholstery for vehicle" based on the fact that it is well-known on "zipper" goods.

[Abbreviature of Adjudication]

1. The Supreme Court considered that the evidence provided by XX Co., Ltd. in this case is sufficient to prove that zippers can be applied to upholstery for vehicle, and they belong to the relationship of upstream and downstream goods. What's more, "YKK" is a fabricated word, and has relatively strong distinctiveness. Under the circumstance that the trademark YKK has very high popularity on zipper goods, based on the relationship of upstream and downstream goods between "upholstery for vehicle" and "zipper", it is available to recognize that they had relatively strong commodity relevance.

2. In addition, before the judgment of second instance in this case was made, the Court of Second Instance recognized that the trademark YKK had reached the well-known degree in both (2012) No. 1236 Final Judgment of the Higher People's Court on Administrative Dispute Cases and (2013) No. 482 Final Judgment of the Higher People's Court on Administrative Dispute Cases. The Supreme People's Court considered that the two cases are basically the same as this case in terms of details, so is the evidence in the cases about the well-known state of relevant trademarks, and in the precondition of persisting with the principle of consistent law application standard, the judgment of second instance of this case shall provide corresponding cross-class protection for the trademark YKK based on its well-known degree. There are many differences in the concrete circumstances of trademark examination, and the examination on individual cases of trademarks has its rationality, but it is improper to give distinctively opposite judgment for this reason in the judgment of similar cases, or it would be difficult to guarantee the explicitation and foreseeability of the rules for application of trademark laws.

[Typical Significance]

The judgment made by the Supreme People's Court in the YKK Case has extremely important significance for making clear to the public the two legal issues, namely the on-demand recognition principle of well-known trademarks and the consistent law application principle. It is requested that, in the cases where the protection of trademark right is provided in accordance with Article 13 of the Trademark Law, the court shall persist with the on-demand recognition principle, instead of surely examining the fact whether the trademark requesting protection constitutes a well-known trademark first. Where the opposed trademark does not constitute the reproduction, imitation and translation of another person's well-known trademark, or the goods differ greatly, and the opposed trademark will not induce the damage consequences of confusing or misguiding the public, then it will be unnecessary to provide cross-class protection for the well-known trademark, and under such circumstances, it is obviously unnecessary to affirm the fact of well-known trademark. In this case, the Supreme People's Court reaffirms the principle of consistent law application principle, emphasizes "same judgment for same cases", realized judicial justice, effectively protects the rights and interests of the party concerned, guarantees the predictability of law, and strengthens the transparency of law enforcement.

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