Monday, December 07, 2015 8.34 AM / Contributed by Wan Hui Da Law Firm & Intellectual Property Agency
Article 32 of the Trademark Law 2013 provides as follows:
"An application for trademark registration shall not be allowed to harm another person's prior rights, and no pre-emptive application by any unfair means for a trademark which has been used by another person and has a certain influence shall be allowed for registration."
Established in 1833, Lafarge SA is a world leader in building materials, with a business network spanning China and 74 other countries and regions around the world. Its main products include cement, concrete, aggregate, gypsum building material, roofing systems and related building products. Lafarge is ranked at the top of this industry globally.
Lafarge registered the trademarks LAFARGE, LAFARGE (in Chinese characters) and LAFARGE (and device) in several classes with the China Trademark Office (CTMO).
On March 19 2012 a Mr Wang applied to register the trademarks LAFARGE (in Chinese) (Number 10636173, see Figure 1) and LAFARGE (Number 10636172, see Figure 2) for the goods "emery paper; furbishing preparations; sandpaper; abrasives; rubbing emery; sharpening preparations; nail varnish; air fragrance preparations; polish for furniture and flooring; sand cloth (abrasive cloth)" in Class 3.
On February 13 2013 both of these trademarks were preliminarily approved by the CTMO.
On March 21 2013 Lafarge filed oppositions with the CTMO against these trademarks, citing its prior trademark registration in Class 19 and its prior right in the word 'Lafarge', in both Latin and Chinese characters, recorded as the name of the company.
On April 13 2015 the CTMO refused registration of the marks, citing the opponent's prior trade name rights. The CTMO held that the trade name 'Lafarge', in Chinese and Latin characters, had been created by the opponent and had a high degree of originality. The submitted evidence proved that 'Lafarge', in Chinese and Latin characters, was a trade name with a high reputation among the relevant consumers for cement, concrete and related building materials. The opposed trademarks consisted of Chinese or foreign characters that were identical to Lafarge's trade names. Moreover, the goods "polish for furniture and flooring; abrasives" had a close association with Lafarge's products. The opposed trademarks therefore infringed the trade name rights of the opponent and violated Article 32 of the Trademark Law, and were accordingly refused registration.
The Trademark Review and Adjudication Board (TRAB) has explicitly elaborated in its official newsletter on the prerequisite for invoking the protection of a prior trade name:
"The cited trade name shall have a certain reputation among the relevant consumers in China; the registration and use of the disputed trademark must be likely to cause confusion among the relevant public, which could be detrimental to the interests of the owner of the prior trade name."
The TRAB added that:
"in principle, in order to adopt the aforesaid examination criterion, the designated goods or services provided by the trade name owner and those covered by the disputed trademark shall be identical or similar."
Nevertheless, it is advisable to interpret the similarity of the goods or services of the parties as mentioned above as an 'optional clause', because the protection of a prior trade name should aim to avoid confusion among consumers and prevent damage to the interests of the owner of the prior trade name. In light of the diversification of modern enterprises and the fact that consumers are aware of this reality, if the prior trade name has a high reputation and the disputed mark has obviously been filed in bad faith, it is reasonable to extend protection of a prior trade name to goods or services that are closely associated with the trade name owner, since the registration of trademarks for such goods or services would likely cause confusion among the relevant public and damage the interests of the trade name owner.
In the present case, the CTMO also took into account the originality of the opponent's prior trade name. Therefore, the following factors are worth considering when invoking protection over a trade name:
· the originality of the prior trade name;
· the similarities between the trade name and the trademark;
· the association between the goods involved; and
· the reputation of the trade name itself.