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In May 24, 2019, the Beijing IP Court recognized Cisco’s “CISCO in Chinese” mark on network communication equipment as well-known in China and revoked the decision held by the Trademark Review and Adjudication Board (TRAB).
Beijing East IP team represented Cisco and won the victory in the first instance court appeal. This case indicates the scope of registered well-known mark, which should not be limited to related goods/services. If the use of the disputed mark on the designated goods/services is sufficient to weaken the corresponding relationship between the cited well-known mark and its approved goods/services, such circumstance shall also fall within the protection scope of well-known mark.
The “SIKE and SI KE in Chinese” mark (the Disputed Mark) was filed by a Chinese company named Foshan Shunde Lun Jiao Jun Ze Electrical Appliance Factory with the Chinese Trademark Office (CTMO) on November 27, 2013, designating the goods of “electric cooking utensils; electric kettles; electrical water heater; electric heater for making yogurt; electric pressure cookers [autoclaves]; gas burners; gas water heater” in Class 11. Cisco filed an invalidation based on its “CISCO in Chinese” mark (the Cited Mark) designating the goods of “network communication equipment” in Class 9. The TRAB held that the arguments for invalidation are not supported and the Disputed Mark shall be approved for registration. Dissatisfied with the TRAB decision, Cisco filed the appeal before the Beijing IP Court (first instance court). The grounds for appeal focus on well-known mark recognition prescribed by Article 13 (3) of the Chinese Trademark Law. To support such claim, Cisco provided a great number of evidence to prove the use and reputation of the Cited Mark, such as rankings and awards granted to Cisco or its network communication products, various advertising and promotional activities, media reports covering Cisco’s revenue and market share in China, financial reports and protection records. The Beijing IP Court held that the above evidence is sufficient to prove the well-known mark status of “CISCO in Chinese” on the goods of “network communication equipment” in Class 9 prior to the application date of the Disputed Mark.
The Beijing IP Court (first instance court) held the view that the Disputed Mark consists of Chinese characters “CISCO in Chinese” and its corresponding phonetic alphabet “SIKE,” which constitutes a copy of Cisco’s well-known mark “CISCO in Chinese.” The goods “electric cooking utensils; electric water heater, etc.” under the Disputed Mark are household consumer products, and their relevant public overlap with that of the Cited Mark to some extent. Meanwhile, “CISCO in Chinese” is a coined word and bears strong distinctiveness, while the registrant of the Disputed Mark failed to make reasonable explanation on the creation of the mark. Further, the evidence shows that the registrant also applied for five other marks by copying the “3M” mark, in addition to two “SIKE and SI KE in Chinese” marks, which reflects obvious bad faith. Therefore, the use of the Disputed Mark on designated goods is highly likely to cause the relevant public to associate it with Cisco’s well-known mark or dilute the inherent relationship between the Cited Mark and Cisco’s products, weaken the distinctiveness of Cisco’s well-known mark, and thus damage Cisco’s interests.
In sum, Cisco’s grounds for appeal are established and supported by the Court. The first instance Court revoked the decision held by the TRAB and ordered the China National Intellectual Property Administration (CNIPA) to re-issue the decision.