In December, 2006, Pierre Fabre Dermo-Cosmetique lodged an opposition against the mark “AVENE” (hereafter referred as the opposed mark) on the goods “toothpaste, cleaning agents” in class 3 filed by a Chinese company.

The China Trademark Office (CTMO) made a decision to approve the registration of the opposed mark, ruling that it didn’t constitute a similar mark to the “Avene EAU THERMALE“ trademark of Pierre Fabre Dermo-Cosmetique in respect of identical or similar goods. Review on the decision of the CTMO was filed with the Trademark Review and Adjudication Board (TRAB), who upheld the decision of the CTMO.

Dissatisfied with the decision of the TRAB, Pierre Fabre Dermo-Cosmetique lodged an appeal with the Beijing No.1 Intermediate Court in 2011, requesting that the opposed mark should not be approved for registration, due to the goods “toothpaste” designated by the opposed mark are similar to the goods “soap and shampoo” designated by the cited trademark “Avene EAU THERMALE” in function, usage, marketing channel and target consumers.

In February 2013, the Beijing No.1 Intermediate Court made a decision and upheld the decision of the TRAB, ruling that according to the evidence in this case, the goods designated by the cited trademark are mostly sold on counters, while “toothpaste” designated by the opposed mark is sold in supermarkets. The two kinds of goods are not similar to each other as they are different in function, usage, manufacturer and marketing channel and target consumers. In view of the reputation of the cited trademark, it is not likely that consumers will get confused between the opposed mark and the cited trademark.

Dissatisfied with the decision of the Beijing No.1 Intermediate Court, Pierre Fabre Dermo-Cosmetique lodged an appeal with Beijing High Court. And the Court made a final decision: the decisions made by the TAB and the Beijing No.1 Intermediate Court shall be cancelled and the TRAB shall make a new decision on the opposition against the opposed mark “AVENE”.

In its decision, the Beijing High People’s Court holds: the determination of similarity between goods or services is helpful for the protection scope of a trademark. Therefore, the likelihood of confusion caused by similarity between goods or services shall be determined case by case. Such factors as function, usage, manufacturer and marketing channel and target consumers shall be taken into consideration to decide whether the coexistence of two trademarks is likely to mislead the relevant public into associating the goods or services with the same source. In this case, the goods “toothpaste” designated by the opposed mark and the goods “soap and shampoo” designated by the cited trademark are all household commodities used by consumers. Therefore, the goods mentioned above are related to each other in terms of function, usage, manufacturer and marketing channel and target consumers. The opposed mark is similar to the distinctive part of the cited trademark. The use of the trademarks on “toothpaste” and “soap and shampoo” is likely cause confusion among the consumers.

Attorneys Mr. Zhong Wenjun and Mr. Hu Gang of CCPIT Patent and Trademark Law Office represented Pierre Fabre Dermo-Cosmetique in the appeals before the intermediate court as the plaintiff and the high court as the appellant.