Recently, the 6th Pharmaceutical Factory of Harbin Pharmaceutical Group has received the written decision on the rejection of the registration of the trademark, which the 6th Pharmaceutical Factory of Harbin Pharmaceutical Group filed the opposition against the trademark “护同 METHYL PROTECT 6.3 and device” with registered No. 27800005 on the Class 35. This case is not only the protection case of the State Intellectual Property for the well-known trademark of “护彤”， but also one of important parts of the trademark case of Hutong. 

Introduction to the case: 

On 12th August 2019, the opponent, the 6th Pharmaceutical Factory of Harbin Pharmaceutical Group, has filed opposition against the trademark “护同 METHYL PROTECT 6.3 and the device” with registered No. 27800005, Dalian Songheng Chinese Herbal Medicine Industry was the person challenged. 

The opposed trademark“护同 METHYL PROTECT 6.3 and the device” has been designed to use on the goods “Retail or wholesale service for the medical purpose, veterinary purposes, sanitary preparation and medical supplies.” of Class 35. However, the opponent’s prior registered trademark “护彤”with the registered number 7832643 has been approved to be used on the goods “Advertising service” of Class 35; the trademark “护彤”with the registered number 1568407 has been approved to used on the goods “kinds of injections; tablets; drug capsules” of Class 5. 

China National Intellectual Property Administration held that: 

The opposed trademark and the opponent’s cited trademark did not constitute similarity on the similar goods or services. The opponent has registered and used the trademark “护彤”with the registered number 1568407 on the goods “kinds of injections; tablets; drug capsules” of Class 5, the trademark enjoys higher reputation because of extensive publicity and long-term use, also, gained the protection as per Article 13 of China’s Trademark Law. The opposed trademark and the opponent’s trademark have similar constitution on words and the same pronunciation, also, the designated services have strong relevancy with the opponent’s trademark’s well-known goods, then, the imitation to the opponent’s trademark has been constituted, its registration and the use are liable to mislead the public and may pose the damage to the opponent’s interest. As per Article 13-3 and Article 35 of China’s Trademark Law, the registered of trademark “护同 METHYL PROTECT 6.3 and the device” with No. 27800005 should be rejected. 

Brief Comments on the Case

As per Article of 13-3 of China’s Trademark Law, the trademark“护彤”should be granted for the protection on cross-classification. 

Typical Meaning: 

The cross-class protection of well-known trademarks is not only reflected in this case, but also reflected in the results of the series cases regarding the trademark“护彤” (Hu Tong in Chinese). 

The identification of the relevant case by China National Intellectual Property Administration has undoubtedly strengthened the protection of the trademark“护彤” and pointed out the direction for us to safeguard trademark right.

For this case, Article 13-3 of China’s Trademark Law aims to grant stronger protection to well-known trademarks comparing with general registered trademarks. The features of cross-classes protection are to enjoy the absolute exclusive right to use the well-known trademark registered in China, not limited to the same goods or services, and to prohibit anyone from registering and using any goods and services. The performance of cross-class exclusive right must meet three conditions below: (1) this well-known trademark has been registered in China. (2) the scope of exclusive use on this well-known trademark adapt to all kinds of goods or service. (3) the use of the well-known trademark by others may mislead the public and may pose damage to the interest of the registrant’s well-known trademark. It can be seen that the protection scope on the registered well-known trademark is wider, and its exclusive right has absolute effect. 

The team of WANG Youwei and ZHANG Yi from Beijing Jealan Trademarks Agency have offered 6th Pharmaceutical Factory of Harbin Pharmaceutical Group with legal service for the application for the opposition.