In April 2013, Beijing First Intermediate Court rendered the (2013) Yi Zhong Zhi Xin Chu Zi No. 134 Administrative Decision (Decision No. 134) sustained the decision of the Trademark Review and Adjudication Board’s (TRAB), where the English mark of a worldwide famous website as well-known in China. Beijing East IP Law Firm represented this worldwide famous website.

This is a rare case among around 100 marks where Beijing First Intermediate Court (court of judicial review for the decisions of the Trademark Review and Adjudication Board) has recognized well-known marks in the past 10 years. This is a rare case especially for the foreign trademark registrants.

In August 2012, the TRAB supported the claims of this worldwide famous website during the opposition appeal, recognized its English mark in Class 42 for computer services as well-known in China and held that the opposed mark violated Article 13 of the Chinese Trademark Law. Moreover, the opposed mark violated Article 28 and 31 of the Chinese Trademark Law.

The defendant (a Beijing based company) was unsatisfied with the TRAB decision and appealed to Beijing First Intermediate Court. In April, 2013, Beijing First Intermediate Court sustained the TRAB decision. Beijing First Intermediate Court held the following:

First, except intellectual property supervising services designated by the opposed mark, its computer rental, computer programming, and other services constitute as identical or similar to the cited mark of the worldwide famous website’s approved services for computer services, namely, providing searching and indexing services for information used on computer network. Thus, the opposed mark constitute as a similar mark to the cited mark. Accordingly, the opposed mark’s designated use for computer rental, computer programming, except intellectual property supervising services, violated Article 28 of the Chinese Trademark Law.

Second, this worldwide famous website’s English name has been used on computer and Internet related service before the application date of the opposed mark, which became well-known in the commercial market and among the public through such use, thus it may be protected as an enterprise name. Such actual use of the worldwide famous website’s trade name on internet and network related services are not only related to the opposed mark’s designated services for intellectual property supervising services, but are also highly related to computer rental, computer programming, and other services. Moreover, the opposed mark is similar to the font and size of the worldwide famous website’s mark, where the registration of the said opposed mark’s services is likely to cause confusion among the relevant public as to the sources of goods, damage the prior trade name right of the worldwide famous website. Therefore, the opposed mark’s designated services not only violated Article 31 of the Chinese Trademark Law by designate services on intellectual property supervising services, but also violated the said Article 31 on services for computer rental and computer programming.

Third, the worldwide famous website’s English mark is well-known among the relevant public in China before the application date of the opposed mark, which shall be recognized as a well-known mark. Though the opposed mark designated service for intellectual property supervising services is not related to the computer services designated under the worldwide famous website’s cited mark, but under the circumstance that the cited mark constitutes as a well-known mark, the opposed mark’s use on the said services is likely to cause relevant public to associate it with the cited mark and mislead the public, which is likely to detriment the worldwide famous website’s interests. Therefore, the opposed mark’s designated service for intellectual property supervising services violated Article 13 of the Chinese Trademark Law.