On August 19th 2003, Guangzhou Aoda Biological Health & Beautiful Technology Development Co., Ltd. (hereinafter referred to Aoda Biological Company) applied for the “COCICOLA” trademark on type 3 products including “shampoo, facial wash, cosmetics”. The application no. was 3681002. On October 31st 2005, Coca-Cola Company field opposition application to the Trademark Office. After the evaluation and trialing of the Trademark Office, the Trademark Review and Adjudication Board and Beijing No. 1 Intermediate People’s Court, the opposed trademark was not approved for registration in accordance with the law. 

Beijing No. 1 Intermediate Court, in the [2014] Yi Zhong Zhi Xing Chu Zi No. 4822 Administrative Judgment, ruled as follows, in accordance with the law: Coca-Cola Company had submitted basic evidence including the selling, advertisement and protection recordation in relation to the fact of the cited trademark’s fame on non-alcohol beverage products. With regards to the well-known facts, it should be confirmed that the cited trademarks “COCA COLA” and “可口可乐” had already constituted well-known trademarks before the application for the registration of the opposed trademark. The opposed trademark consisted of “COCICOLA”, which had merely slight differences with the cited trademark “COCA COLA” in terms of letters and pronunciation. Therefore, the opposed trademark and the cited trademark “COCA COLA” constituted similar trademarks. The registration and use of the opposed trademark on products including “shampoo and facial wash” would weaken and diminish the distinctiveness of the prior well-known trademark “COCA COLA” and lower its value as a trademark, constituting the situation of “misleading the public and causing possible harm to the rights of the applicant of the well-known trademark”. Therefore, the application for the registration of the opposed trademark violated article 13 paragraph 2 of the 2001 Trademark Law. 

2. Main Approaches and Lessons

The spotlight of the dispute in this case was whether or not the application of the opposed trademark constituted the situation described in article 13 paragraph 2 of the 2001 Trademark Law. We consider that “misleading the public and causing possible harm to the rights of the applicant of the well-known trademark” of the Trademark Law should include the following two situations: one is that the registration and use of the latter trademark constitute cross-category confusion with the prior well-known trademark, the other is that the registration and use of the latter trademark constituted diminishing on the prior well-known trademark. Therefore, in confirming whether or not the opposed trademark’s application violates the situation described in article 13 paragraph 2 of the 2001 Trademark Law, one should firstly judge if the cited trademark constitutes a well-known trademark, based on which then confirm if the application of the opposed trademark constitutes the situation of “misleading the public and causing possible harm to the rights of the applicant of the well-known trademark”. Based on this, with regards to if the cited trademark constituted well-known trademark, to the distinctiveness of the cited trademark, to if the opposed trademark constituted plagiarism and imitation of the cited trademark, to the subjective bad faith of the third party, to the possible harm induced by the registration of the opposed trademark on the trademark owner and related aspects, we conducted thorough arranging and categorization of the evidence provided by the plaintiff and presented thorough explication in the court. Also, during the trial, we stressed that the protection of well-known trademarks should not be limited to the consideration of if confusion or misconception might exist, but be extended to their distinctiveness. If it was possible for the opposed trademark to diminish the distinctiveness of the well-known trademark, it should not be proved for registration. The Court accepted the evidence from the plaintiff eventually and supported the litigation requests of the plaintiff. It recognized the cited trademark of the plaintiff as a well-known trademark and offered anti-diminishing protection. 

3. Significance as a Model Example 

The purpose of protecting of well-known trademarks is to properly extend the protection range and strength for trademarks that possess high reputation. The protection of well-known trademarks should not be limited to the consideration of cross-category confusion, but involve the situation of the prior well-known trademark being diminished. Trademark diminishing is the decrease in the distinctive symbol’s ability to identify the source product. To be more specific, the subject of the diminishing behavior, using the same or the similar symbol of the well-known trademark on the products or services, which are neither the same nor the similar, with the intention of promoting his or her products using the commercial reputation of the well-known trademark, would cause decrease in the relationship between the well-known trademark and the products and services it originally identify. The particular attraction and identifying function of the well-known trademark will be diminished, the commercial reputation it carries will be harmed, and its commercial value will be decreased. Providing anti-diminishing protection for well-known trademarks will help maintain the distinctiveness of well-known trademarks trademark, increase the identifying ability of well-known trademarks, protect the commercial values of well-known trademarks and maintain a positive market competition order.