PROFILE

Li Shubao has gained preliminary examination announcement on the trademark No. 48004254 “魅珂菲” (Mei Ke Fei in Pinyin) which was applied for the registration on Class 21 ‘make up accessories’, MAKE UP FOR EVER, world famous cosmetics company, has entrusted Janlea Trademarks Co., Ltd to file the opposition against the disputed trademark within the period of announcement. Recently, China National Intellectual Property Administration has, in accordance with Article 30 of the Trademark Law, ruled not to approve the registration of the disputed trademark. 

RULING OF CHINA NATIONAL INTELLECTUAL PROPERTY ADMINISTRATION

The disputed trademark, “魅珂菲” (Mei Ke Fei in Pinyin), has been designated to use on the goods ‘make up accessories’ of Class 21, ‘玫珂菲’ (Mei Ke Fei in Pinyin), the opponent’s cited trademark has been approved to be used on ‘Hair Brush; Make up Accessories’ of Class 21. The disputed trademark and the opponent’s cited trademark are similar in terms of characters composition, sounds, fonts and overall appearance. The designated goods of two sides are almost identical in terms of functions, purposes, selling places and channels, they are belonging to the similar goods, furthermore, they constituted similarity on similar goods, the registration and use of the disputed trademark will lead to confusion and misidentification among consumers. In accordance with Article 30 of the Trademark Law, the disputed trademark has been ruled not to approve the registration.

ANALYSIS OF THE CASE

This case is a typical case of applying Article 30 of the Trademark Law to determine the similarity of Chinese character trademarks.

In this case, Make Up For Ever, the world famous cosmetics maker from France, was established in 1984 and belongs to LV group, the main trademark of the its goods is ‘MAKE UP FOR EVER’, and “玫珂菲” in Chinese. “玫珂菲” is a trademark independently created by the opponent according to the English main trademark, with strong originality. The opponent has set up cosmetics exclusive shop of ‘MAKE UP FOR EVER’ in China since 2012, for now, the opponent has operated many cosmetics exclusive shops of ‘MAKE UP FOR EVER’ in many cities in China, the brand of “玫珂菲” enjoys high popularity and influence among the public in China.

The disputed trademark ‘魅珂菲’ and the opponent’s trademark ‘玫珂菲’, both of them are pure Chinese trademarks, did not inclusive any other foreign language or designs, both sides’ trademarks are constituted by three Chinese characters, the sounds and pronunciation are identical, although the fonts of the first characters are different, the last two characters are totally identical in terms of character composition and fonts, considering the trademark ‘玫珂菲’ is being used on the cosmetics goods, also including the originality, significance and reputation on the cosmetics tools, the registration and use of the disputed trademark will lead to the confusion and misidentification of among consumers. As a result, as per Article 30 of Trademark Law, China National Intellectual Property Administration ruled not to approve the registration of the disputed trademark. 

MEANING OF THE CASE

For the malicious acts of others who apply for the registration on similar goods with the different first character, but identical sounds, we should actively collect the evidence of reputation of the client’s trademark, furthermore, file an opposition, application for invalidation to prevent malicious imitation of the well-known brand, protect the legal rights and interests of the brand stakeholder.