A third party has registered and/or used a company
name which incorporates the well-known mark or a mark similar to such
well-known mark. A well-known mark is legally protected against such
unauthorized registration and/or use.
In re Starbucks Corporation vs. 
(Shanghai Starbucks Cafe Co. Ltd.), the court
held that the plaintiff's marks "Starbucks" and "
"
(Starbucks in Chinese transliteration) were both recognized as well-known
marks (class 42) and the defendant's use of ""
as part of company name and in commerce as well committed trademark
infringement and act of unfair-competition.
The plaintiff enjoyed first use of the mark ""
in Taiwan in 1999, which was earlier than the defendant's registration
for the company name "
"
(Shanghai Starbucks Cafe Co. Ltd.) in 2000. The plaintiff obtained
trademark registration for "Starbucks" in 1996, and in acquired trademark
registration for ""
on "advertisement service" in class 35 in 1999, "restaurants, etc."
in class 43 and "coffee, etc." in class 30 in 2000 in China, respectively.
The defendant was engaged in coffee bar business and used ""
on the shop windows, and "
Starbuck Coffee" on the menu and receipts, etc..
1. Issues the court addressed in this case
i) Well-known mark recognition.
The court found that the plaintiff's marks "Starbucks" and ""
had become well-known marks (in class 43) through extensive use and
advertisement in China before the defendant started to use ""
as company name.
ii) Unfair competition
By incorporating the plaintiff's well-known mark ""
in the company name ""
and using the signs containing "",
the defendant's business behaviors violated the principle of honest
and credit and commonly adopted commercial ethical standard, since
the behaviors and use are sufficient enough to cause confusion among
relative public, or erroneous thinking that there has been relationship
between the parties. Therefore, the defendant took advantage of the
plaintiff's good-will and reputation intentionally and by improper
means, in order to increase their reputation and influence. The defendant's
activities constituted unfair competition.
iii) Trademark infringement
The defendant committed trademark infringement upon the plaintiff's
marks by using the signs containing "Starbuck" and ""
since the signs are similar to the plaintiff's registered trademarks
"Starbucks" and ""
in respect of similar goods and/or services.
2. What the court decided in this case?
In this case, the court ordered the defendant to stop infringing activities
and any act of unfair competition, change the company name to a new
name that does not contain "
",
pay statutory damages 500,000 RMB (about $71,400 now), make public
apology and compensate plaintiff for reasonable amount of legal fees.
3. In China, who has authority to recognize
well-known marks in well-known mark vs. company name cases?
In China, the intermediate people' s courts of first instance trial
and the Administration for Industry and Commerce (AIC) above county
level are empowered as judicial and administrative organs to deal
with conflits between company name and well-known marks. In reality,
most cases are resolved via legal proceedings before the court, rather
than the AIC proceeding due to the AIC's internal procedural problem.
4. In China, what are the principle and factors
of recognition of well-known mark?
China implements the principle of "at request of the concerned party
in a specific case in which the well-known mark is involved" in the
process of recognition of well-known mark. The recognition is effective
on the involved case only, but allowed to quote as a reference in
other cases in which the same well-known mark is involved. As provided
by Article 14 of the Trademark Law, the following factors shall be
taken into consideration,
1) the degree of knowledge of the relative public;
2) the duration of use;
3) the duration of time, degree and geographical
range of any publicity of the mark;
4) any record of the mark being protected as
a well-known mark;
5) Other factors which make the mark well-known.
A well-known mark is legally protected against the registration
of a domain name which incorporates the well-known mark or mark similar
to such well-known mark.
In re WAL-MART STORES, INC. (
)
vs. 
(Zhongshan City Wo Er Ma Lamps Factory), ("
"
is Chinese transliteration for Wal-Mart and the Chinese Pinyin thereof
is WO ER MA), the court recognized the plaintiff's trademark ""
as well-known mark and held that the defendant's registration of company
name ""
and domain name www.woerma.com.cn
infringed upon the legitimate rights and interests of owner of the
well-known mark.
In 1996, the plaintiff obtained trademark registration for ""
for "import and export agency and promotion for others" in class 35
and in other 31 classes afterwards. However, the plaintiff did not
register the mark for "lamps, etc." in class 11. The defendant registered
trademark "
WOERMA" for "lamps, lamp stands, etc." in class 11 in 2001 and obtained
registration for domain name www.woerma.com.cn
in 2002 as well.
1. Issues addressed by the court in this
case
i) Well-known mark recognition
Based on the evidences submitted by the plaintiff, the court finds
that the mark ""
has become the core brand and enjoyed high reputation among the Chinese
public, and become well-known mark in respect of the designated service
"import & export agency, promotion for others" in class 35 in China
before the defendant's registration of the company name and the domain
name.
ii) Infringement by company name upon well-known mark
Defendant's company name infringed upon the legitimate rights and
interests of the well-known mark enjoyed by the plaintiff.
iii) Infringement by domain name upon well-known mark
Defendant's domain name infringed upon the legitimate rights and interests
of the well-known mark enjoyed by the plaintiff.
iv) Claim of infringement upon well-known mark is not justified
Defendant's use of its registered mark "
WOERMA" for "lamps, lamp stands, etc." in class 11 did not infringe
upon the plaintiff's well-known mark.
2. What the court decided
in this case?
The court decided that the defendant immediately stop using ""
as in the company name "",
cancel the domain name www.woerma.com.cn
and pay damages suffered by the plaintiff.
3. What the court primarily took into consideration in this case?
In this case, the court did not extend protection of well-known mark
"" from
the designated service in class 35 to the goods "lamps, lamp stands,
etc." in class 11. That is to say, cross-class protection for well-known
mark is not unlimited and scope of protection for well-known could
not be expanded too widely. We may assume that the court struck balance
of the interests of well-known mark holder and the social and public
interests.
The most common problems for well-known mark owners in China
and what would be advice to them on maximizing their protection.
If your trademark has become well-known, the mark may be copied, imitated
or translated/transliterated into Chinese and applied for registration
by a third party. A third party filed for registration for PIRELLI
in connection with "precious stone, clocks, etc." in class 14, and
the Italian Pirelli Tires S.p.A. filed an opposition against the mark
based on its Chinese registration for "PIRELLI" for "tires" in class
12. In the opposition proceeding, the Italian "PIRELLI" was recognized
as well-known mark and accordingly, the other party's mark was rejected
for registration. In another cancellation case, Xianmen Huierkang
Foods Co. Ltd. first used but not registered the mark "
"
(Hui Er Kang in Chinese) for drinks in class 32, and a third party
filed for registration of identical mark ""
for similar goods. In the cancellation proceeding, ""
was recognized as well-known mark and accordingly, the other party's
trademark registration was cancelled.
If your mark has become well-known, your mark and/or similar mark
to your mark may be incorporated in a company name in bad faith by
a third party. Such case as
and ,
in that the well-known marks ""
and ""
are incorporated in enterprise name registered by third parties.
If your mark has become well-known, your mark and/or similar mark
to your mark may be included in a domain name in bad faith by a third
party. Like the domain name dispute case www.woerma.com.cn,
WO ER MA is incorporated in the Chinese domain name by third party.
Advice to maximize the protection of well-known mark
When a mark is involved in a specific case, the mark owner may seek
recognition of well-known mark through following channels,
• filing trademark opposition with China Trademark Office;
• filing trademark cancellation with the Trademark Review and
Adjudication Board ("TRAB");
• filing administrative complaint with the State Administration
for Industry and Commerce ("AIC") in trademark infringement case or
enterprise name case;
• filing lawsuit with the court of law in trademark infringement
case, enterprise name dispute case or domain name dispute case.
At the time when entering into Chinese market or a few years ahead
of the entry, it is always advisable to obtain registration for a
reputable trademark in classes of goods of major interest and in all
the other classes as well in a defensive manner, since China implements
"first to file" principle and the registration system and basically,
registered trademarks can be protected under the Trademark Law, unless
your mark is recognized as well-known mark.
The well-known mark owner shall keep a watch over the official Trademark
Gazettes in order to identify trademarks in form of copying, imitation
or translation/transliteration of you mark.
The well-known mark owner may keep surveillance in important market
place, and when any infringing activity is found, go to AIC or Court
to enforce your trademark right.
On some occasions, the well-known mark owner may put legal notice
in relevant media to the pubic, noting a specific mark is your well-known
mark and you will take relevant administrative and legal action to
fight against any activity taking advantage of goodwill built up on
the well-known mark.
Last, collecting and keeping evidence of use of your trademark are
as equally important as taking action to register and protect the
mark, since evidences are crucial in recognition of well-known mark.
