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McDonald’s “McFlurry in simplified Chinese” and “McFlurry in traditional Chinese” have been recognized as well-known trademarks by the Beijing IP Court – after the well-known recognition of “McDonald’s & Arches logo,” “McDonald’s in Chinese” and “McDelivery in Chinese” by the China Trademark office (CTMO) and the Trademark Review and Adjudication Board (TRAB).
In July 5, 2019, the Beijing IP Court recognized McDonald’s “McFlurry in simplified Chinese” and “McFlurry in traditional Chinese” marks on “milk products” and “ice cream” as well-known in China and revoked the decision held by the TRAB.
Beijing East IP team represented McDonald’s and won the victory in the first instance court appeal.
The “McFlurry in traditional Chinese” mark (the Disputed Mark) was filed by a Hong Kong company named China Top Foods Co., Limited with the CTMO on January 15, 2013, designating the services of “providing campground facilities; retirement homes; day-nurseries [crèches]; boarding for animals; rental of chairs, tables, table linen, glassware; rental of cooking apparatus” in Class 43. McDonald’s filed an invalidation based on its “McFlurry in simplified Chinese” (the Cited Mark 1), “McFlurry in traditional Chinese” (the Cited Mark 2) designating the goods of “milk products” in Class 29 and “ice cream” in Class 30 respectively. 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, McDonald’s filed the appeal before the Beijing IP Court (first instance court). To support the claim of well-known mark recognition prescribed by Article 13 (3) of the Chinese Trademark Law, McDonald’s provided a great number of evidence to prove the use and reputation of the Cited Marks, such as rankings and awards granted to McDonald’s, various advertising and promotional activities, media reports coverage in China and protection records. The Beijing IP Court held that the above evidence is sufficient to prove the well-known mark status of “McFlurry in simplified Chinese” and “McFlurry in traditional Chinese” on the goods of “milk products” in Class 29 and “ice cream” in Class 30 prior to the application date of the Disputed Mark.
The Beijing IP Court held the view that the Disputed Mark, which is identical to the Cited Mark 2 and only different from the Cited Mark 1 in font, constitutes a copy of McDonald’s Cited Marks. Though the services “providing campground facilities; retirement homes; day-nurseries [crèches]; etc.” under the Disputed Mark and those goods “milk products” and “ice cream” under the Cited Marks are different, their relevant public overlaps to some extent. Meanwhile, McDonald’s Cited Marks “McFlurry in simplified Chinese” and “McFlurry in traditional Chinese” on the goods of “milk products” and “ice cream” have acquired relatively high fame, which should have been known by the relevant public of those services designating under the Disputed Mark. Further, the registrant of the Disputed Mark did not provide any evidence of use to prove the Disputed Mark can be differentiated from the Cited Marks and will not cause confusion or misunderstanding among the relevant public. Therefore, the registration and use of the Disputed Mark will definitely mislead the public. The registrant’s act of application for registration of the Disputed Mark has taken advantage of the high reputation of McDonald’s Cited Marks, and occupied McDonald’s success which was gained by great efforts and significant investment, and thus damage the interest of McDonald’s.
In sum, McDonald’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.