Recently, the National Intellectual Property Right Bureau brings lawsuit to Beijing Municipal Superior People’s Court due to disagreement of first-instance administrative judgement against the trademark “雪津XUEJIN” (Xue Jin in Chinese), Budweiser Xuejin Beer Co., Ltd. (hereinafter referred to as Xuejin Company) attended the lawsuit as the appellant of the case. According to the examination of Beijing Municipal Superior People’s Court, trademarks “雪津” (Xue Jin in Chinese) under the Reg Nos. 907460 & 1010520 of Xuejin Company  have been recognized as the well-know trademark, the registration of the disputed trademark is in violation of Article 13.3 of the Trademark Law of P.R. China. The conclusion of the

Basic Case Facts:

Xuejin Company applied for announcement of invalidation to the National Intellectual Property Right Bureau on 23 September 2016, the registration of the disputed trademark has been sustained based on Judgement of Request of Invalidation Announcement against the Trademark “雪津 XUEJIN” (Xue Jin in Chinese) under G.J.Z.H. Xuejin Company brought lawsuit due to disagreement of judgement, the first-instance court made judgement under No. (2017) Jing 73 Xing Chu 5532, the appealed judgement has been cancelled, and requested the National Intellectual Property Right Bureau to re-make the request verdict of invalidation announcement.

The National Intellectual Property Right Bureau brought lawsuit to Beijing Municipal Superior Court due to the disagreement. Beijing Janlea Law Firm Company attended the review of the case representing the appellant.

The Court’s Review:

In the course of review, the court adopted partially suggestions from Janlea Law Firm, and held that, according to the evidence that were submitted by Xuejin Company, such as, commercial usage, commercial promotion, sale volume and record of recognition of well-know trademark, the cited trademark 1 & 2 “雪津” (Xue Jin in Chinese) already enjoyed higher reputation in terms of the approved goods “beer” prior to the disputed trademark’s application date, and moreover, it had constituted well-known trademark indicated by Article 13.3 of the Trademark Law of P.R. China. Given that the well-known trademark can be gave cross-classification protection in terms of different or the similar goods. In this case, the disputed trademark is constituted by Chinese character “雪津”, and pinyin “Xue Jin”, it is similar to cited trademarks in terms of words composition, sound and overall appearance. Although the designated goods of the disputed trademark “refrigerator; refrigerated cabinet; drinking cooling device” are different from cited trademarks’ approved goods “beer”, however goods mentioned above are relevancy. Under the situation, the cited trademark 1& 2 recognized as well-known trademark, the disputed trademark has posed imitation against cited trademark 1 & 2, and moreover, it likely to mislead the public in terms of relevant goods, damage Xuejin Company’s interest, and also reduce the distinctiveness of cited trademark 1 & 2, to dim the particular relationship between the well-known trademark and its’ approved goods. As a result, the registration of the disputed trademark is in violation of Article 13.3 of the Trademark Law of P.R. China.

Comments

In the course of first-instance, Beijing Intellectual Property Right Court adopts method break the classification, and held that the designated goods of the disputed trademark “refrigerator; refrigerated cabinet; drinking cooling device” have significant relevancy with the cited trademarks’ approved goods “beer” in terms of functions, as a result, the disputed trademark is considered to be in violation of Article 30 of the Trademark Law, and revoked the judgement of the National Intellectual Property Right Bureau. In the course of second-instance, although Beijing Superior Court held the disputed trademark’s designated goods “refrigerator; refrigerated cabinet; drinking cooling device” are different from every and each cited trademark’s approved goods “beer”, however, the commercial use, commercial promotion, sales volume, record of well-known trademark and other evidence submitted by Xuejin Company can prove the cited trademark 1 & 2 “雪津” (Xue Jin in Chinese) had enjoyed higher reputation on its approved goods “beer” prior to the disputed trademark’s application date, and they have already constituted well-known trademark indicated by Article 13.3 of the trademark law.

However, according to Article 13.3 of the Trademark Law for P.R. China, “the trademark applies for registration in terms of different or dissimilar goods, are copy, imitation or translation of other registered well-known trademarks in China, misleading the public, and result in the damage of interest of the well-known trademark’s registrant, shall be prohibited for the registration.” It indicates that the well-known trademark shall be given cross-protection in terms of different or dissimilar goods.

In this case, Beijing Municipal Superior People’s Court held that, on one hand, the disputed trademark has composed by Chinese characters “雪津”and pinyin “XUE JIN”, and constituted similarity with the cited trademark 1 & 2 “雪津”in terms of character composition, sound and overall appearance. On the other hand, although the disputed trademark’s designated goods “refrigerator, refrigerated cabinet, drinking cooling device” are different from approved goods “beer” of the cited trademark 1 & 2, however, goods mentioned above have some relevancy.

To sum up, Beijing Municipal Superior People’s court held that, under the situation that cited trademark 1 & 2 constituted well-known trademark, the disputed trademark posed imitation against cited trademark 1 & 2, and moreover, the usage in terms of relevant goods easily result in misleading among the public, and furthermore, damage to Xuejin Company’s benefit, and reduce the distinctiveness of cited trademark 1 & 2, to dim the special relation between the well-known trademark and its’ approved goods.

It is worth noting that, in this case, Beijing Municipal Superior People’s Court recognized the trademark “雪津”(Xue Jin in Chinese) has constituted well-known trademark based on the overall case condition, with the situation that the Xuejin Company’s trademark “雪津”(Xue Jin in Chinese) has not been recognized as the well-known trademark by the first-instance. This recognition does not support the Xuejin Company’s claim of invalidation announcement against the disputed trademark, but also recognized the well-known degree of the trademark “雪津”（Xue Jin in Chinese）under the Xuejin Company, and furthermore protect the legal right of Xuejin’s well-known trademark.

Mr. Xu Jin, the partner and senior lawyer of Beijing Jealea Law Firm leads the legal service group to provide Budweiser Harbin beer co. LTD with overall legal service in the whole course of the lawsuit.