The Beijing IP Court Lays Out Guidance for Well-Known Trademark Enforcement

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The recent decision of the Beijing IP Court in the Tiffany/Di Fan Ni case supported the decision of the Trademark Review and Adjudication Board (TRAB) and went on to set down guiding principles for trademark lawyers to keep in mind when arguing similar cases in the TRAB and courts.

Case Title: Tiffany Trademark Invalidation Administrative Dispute between Shanghai Zhendi Decoration Materials Co. Ltd., v. TRAB

Court: Beijing IP Court

Date of Decision: April 24, 2017

Area of Law: Trademark

Significance of Decision: “TIFFANY” was recognized as well-known mark in China, and was granted cross-class protection in relation to goods of jewelry in
class 14 and wallpapers in class 27.

Appealed: No.

On April 24, 2017, the Beijing IP Court delivered its judgment concerning an appeal of a decision of the TRAB to invalidate Trademark Registration No. 8009772 for “蒂凡尼” (pronounced “di fan ni”– clearly this sounds similar to “Tiffany”) upon receipt of a complaint by Tiffany and Company, on the grounds that the trademark at issue was too similar to its well-known trademark “Tiffany”, even though the goods at issue were not jewelry and the like, but were wall paper goods and similar.

The Appellant, Shanghai Zhendi Decoration Materials Co. Ltd., filed an appeal in the Beijing IP Court from the TRAB, due to its dissatisfaction with the TRAB’s decision that invalidated its No. 8009772 “蒂凡尼” Trademark, on the grounds that Tiffany and Company (“Tiffany”) had submitted insufficient evidence to prove that 1) its Tiffany’s China trademark registrations for “TIFFANY” and “TIFFANY&CO.” were well-known in relation to jewelry; 2) the disputed trademark “蒂凡尼” was similar to “TIFFANY” mentioned above in terms of pronunciation and the like; and 3) confusion was unlikely in any case so as to lead to misidentification and damage.

At trial, the Beijing IP Court considered that the registration of the trademark at issue has violated Article 13.2 of the PRC Trademark Law of 2001, due to: 1) Tiffany proving through sufficient evidence of sales and promotion that its two TIFFANY trademark registrations had been well acknowledged by the relevant public and constituted well-known trademarks in relation to the goods of “jewelry” in class 14, prior to the application date (January 20, 2010) of the trademark at issue; 2) Upon long-term and significant use, the “TIFFANY” trademarks have formed strong corresponding relations with its Chinese transliteration “蒂芙尼”, whereas the trademark at issue “蒂凡尼” is not only pronounced similarly to “TIFFANY” but also only one character differs from the Chinese characters used by Tiffany regularly as its Chinese version. Thus, the court concluded that the trademark at issue and the TIFFANY trademarks are similar trademarks; and 3) the Appellant had also registered a “DIFFANY” trademark which is very similar to the well-known “TIFFANY” mark and had been using the “DIFFANY” and “蒂凡尼” trademarks at the same time. Furthermore, it was noted that the trademark at issue, was first applied for registration by the Appellant’s associated company and then assigned to the Appellant at a later time.

In conclusion, the court considered that those findings mentioned above reflected that the Appellant had intentionally set out to obtain a free-ride on the back of Tiffany’s well-known brand, and the use of the trademark at issue on wallpaper would cause association among the relevant public that there might be a licensing, association of affiliates or other relationship between the Appellant and Tiffany, which would result in misidentification of the source of the goods and possible damages to Tiffany.

It is worth noting that, according to the Beijing IP Court, when it comes to determine whether a disputed mark will mislead the public and result in possible damages to the interests of the owner of a well-known mark or not, the following factors should be taken into consideration: the degree of public familiarity of the well-known trademark, similarity of the two trademarks at issue, relativity of the designated goods thereof, subjective intention and so on. These issues should be kept in mind when arguing similar cases in the TRAB or the Beijing IP Court.

ABOUT THE AUTHOR: Fei Dang and Matthew Murphy
Fei Dang and Matthew Murphy are with the MMLC Group.

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Disclaimer: While every effort has been made to ensure the accuracy of this publication, it is not intended to provide legal advice as individual situations will differ and should be discussed with an expert and/or lawyer. For specific technical or legal advice on the information provided and related topics, please contact the author.

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