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24 January 2011
International tyre manufacturer Michelin has been established in China since the 1980s and the company's name has gradually become a well-known trademark. However, the brand's success has attracted numerous imitators, some in unrelated fields.
In December 2008 the company filed suit against an individual who was using the same Chinese characters as Michelin - 米其林 - and the transliteration 'MiQoLin' on sound equipment. The case perfectly demonstrates the benefit of obtaining recognition of a mark's well-known status.
The infringing marks were identical in Chinese script and similar in the Pinyin version, but were used in connection with obviously dissimilar goods - a scenario that is covered in Article 13(2) of the Trademark Law.
In principle, Michelin was required to submit again a whole set of evidence in order to prove its trademark's well-known status, such evidence being listed in Article 14 of the Trademark Law. However, the Guangzhou People's Court held that since the plaintiff's trademarks were not only "known to the relevant members of the public", but were "extensively recognized by the general public in the territory of China", it was not required to submit a complete dossier of evidence. This decision implements a specific Interpretation made by the Supreme Court (Article 8 of the Supreme People's Court's Interpretation on the Application of the Law to Issues for the Trial of Civil Disputes involving Well-Known Marks, which stipulates that where a trademark is extensively recognised by the general public, a lesser burden of proof applies.
The trademark being considered as having an influence outside its scope of protection (a situation addressed by Article 13.2 of the Trademark Law), the Guangzhou People's Court had to decide whether the use of the mark on such products as sound equipment ,did fall within Article 13(2) of the law and would "mislead the public and damage the interests of the registrant of the well-known trademark".
The defendants argued that the different industry sectors and the nature of the products in question (ie, tyres and sound equipment) made it unlikely that confusion would arise. However, the court followed the guidance in Article 9 of the interpretation, which states that:
"The phrase 'mislead the public and cause damage to the interests of the registrant of the well-known trademark' means that the infringing trademark may cause the relevant public to believe that it has a degree of association with an existing well-known trademark, [and thus] dilute the distinctiveness of the well-known trademark or tarnish its market reputation, or improperly take advantage of [such] reputation."
On October 11 2010 the court ruled that even if there was no potential for confusion between loudspeakers and tyres, the infringing use of Michelin's mark was likely to create an association in the public mind, thereby diluting the distinctiveness of the mark and damaging its owner's interests.
This is one of the first cases in which a court has applied this interpretation of Article 13(2) of the law. It is hoped that the State Council, which is in the process of revising the law, will incorporate the text of Article 9 of the interpretation, which served as guidance in this case.
For further information on this topic please contact Paul Ranjard at Wan Hui Da Law Firm & Intellectual Property Agency by telephone (+86 10 6892 1000), fax (+86 10 6894 8030) or email (email@example.com).
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