China Court Found Reputation Of Trademark “DETTOL In Chinese” A Major Contributing Factor In Determination Of Goods Similarity

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(Author: CHEN Yuhan, HU Meili; Source: Wan Hui Da IP Agency)

The determination of the similarity between goods is made case-by-case, which requires taking both the nature of goods and the reputation of the prior trademarks into account.

 

“DETTOL in Chinese” is a famous healthcare brand of RECKITT & COLMAN (OVERSEAS) LTD. (RECKITT & COLMAN), which was once the authorized manufacturer of sanitizing products for the Queen of England. In 1990s, “DETTOL” products entered the Chinese market: disinfectants, disinfection soap, clothing aseptic liquid, body lotions and other personal care products. Through long-term using and advertising, the trademark “DETTOL” acquired a reputation in China.

Back in 1988, RECKITT & COLMAN had applied for several registrations of the trademark “DETTOL in Chinese” including:

· No. 359400 on goods “sterilising preparations, pesticides, etc.” in class 5 (Cited Trademark I);

· No. 359331 on goods “cotton wool, gauze, etc.” in class 5 (Cited Trademark II);

· No. 361241 on goods “bleaching preparations, abrasion preparations” in class 1 (Cited Trademark III) and

· No. 548355 on goods “laundry preparations, soap, etc.” in class 3 (Cited Trademark IV).

On September 25, 2003, a person named ZHONG Xiji, in Guangdong Province, filed 3 trademark applications for “DETTOL in Chinese” (the Opposed Trademark):

· No.3732182 on goods “abrasion preparations, potpourris [fragrances], scented wood, shampoos for pets” in class 3;

· No.3732183 on goods “paper, paper rag, handkerchiefs of paper, napkins of paper for removing make-up; towels of paper” in class 16 and

· No.3732184 on goods “crystal [glassware]; insect traps” in class 21.

RECKITT & COLMAN filed oppositions against these three applications with the China Trademark Office (CTO), on the basis of Article 10.1.8, Article 13.2 and Article 28 of “Trademark Law”. The CTO rejected the three oppositions. RECKITT & COLMAN appealed to the TRAB, which upheld the CTO’s decisions. RECKITT & COLMAN filed an appeal before the Beijing No.1 Intermediate Court. The Court also sustained the registration of the opposed trademarks.

RECKITT & COLMAN appealed to the Beijing Higher Court, claiming that:

(1) The Trademark “DETTOL in Chinese” was created by RECKITT & COLMAN and is of strong distinctiveness. Since the Dettol products were launched in the Chinese market, though extensive use and advertising in China the trademark “DETTOL in Chinese” has acquired a high reputation. The determination of similar goods requires taking both the nature of goods and the reputation of the prior trademarks into account, which ultimately lies on whether there is the possibility of causing confusion among customers. The goods designated by the Opposed Trademarks have a close connection with goods of the Cited Trademark with respect to functionality, usage, channels of sale and customer base etc. So the registration of the Opposed Trademarks will cause confusion and misidentification among customers. Therefore, goods designated by the Opposed Trademarks should be considered as similar to those covered by the Cited Trademark. The first-instance judgment and the TRAB’s decision have not considered the high reputation of the Cited Trademark.

(2) The trademark “DETTOL in Chinese” are well-known trademarks and the opposed Trademarks are a copy and imitation of RECKITT & COLMAN’s trademarks which harms the interests of RECKITT & COLMAN and corresponds to the circumstances prescribed by Article 13.2 of the “Trademark Law”.

(3) ZHONG Xiji works in the field of daily chemical business in Guangzhou, where Dettol China was headquartered before the application date of the Opposed Trademarks. ZHONG Xiji’s bad faith was obvious. And at the same time, ZHONG also preemptively registered many famous trademarks, such as “Chinese transliteration of Oral B”. Such behavior disturbed the order of trademark registration and was of adverse effect, which falls under the circumstances stipulated by Article 10.1.8 of the “Trademark Law”.

During the second instance, RECKITT & COLMAN submitted the search report about “DETTOL in Chinese” by the National Library of China from 1998 to 2003 to prove that before the filing date of the Opposed Trademarks, the trademark “DETTOL in Chinese” of RECKITT & COLMAN already enjoyed a high reputation in China. The court of second instance held such evidence as admissible.

The court of second instance ruled that: The determination of similar goods is to be made case-by-case, which requires taking both the nature of goods and the reputation of the prior trademarks into account. Taking into account the reputation of the Cited trademarks, the Court ruled that the goods covered by the opposed trademarks are similar to those designated by the Cited trademarks. The registration of the Opposed Trademarks on the above goods was considered as likely to causeconfusion and misidentification about the source of the goods. Therefore the court found that the opposed trademarks are similar marks on similar goods as prohibited by Article 28 of “Trademark Law”. The court decided to overrule the first-instance judgment and the TRAB decisions.

WAN HUI DA represented RECKITT & COLMAN in the second-instance trial.

Comments

According to Article 11 and Article 12 of the “Interpretation of the SPC on Certain Issues Concerning the Application of Law in the Trial of Civil Cases Involving Trademark Disputes”, similar goods, as mentioned in Item (1) of Article 52 of the“Trademark Law”, refer to goods for which the relevant public believes that their functionality, purposes, production divisions, sales channels, consumers, etc. have a particular association between each other, which is liable to cause confusion. This interpretation confirms that the concept of “likelihood of confusion” is the criterion for judging goods similarity.

And since the likelihood of confusion is to be assessed in consideration of the reputation achieved by the opposing registered trademark, in this case, the Court of Appeal took into account the reputation of the Cited trademarks and declared that, even it they were not listed formally as “similar goods” in the Examination Guidelines of the Trademark Office, the goods designated by the opposed trademarks were to be considered as similar.

(Courtesy: http://www.wanhuida.com)

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