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The PHOTOSHOP mark owned by Adobe was recognized by the Beijing High Court recently. In August 29, 2016, the Beijing High Court (second instance court) revoked the decision held by both the Beijing First Intermediate Court (first instance court) and the Trademark Review and Adjudication Board (TRAB), and recognized the PHOTOSHOP mark on computer programs as well-known in China.
Beijing East IP team represented Adobe and won the victory in the second instance court appeal. The PHOTOSHOP case covers at least three issues: 1) the protection of well-known mark should stick to the same standard in trademark administrative case and civil infringement case; 2) the scope of a registered well-known mark shall be extended to cover the dilution of well-known mark; 3) new evidence can be accepted by the second instance court.
The “PHOTOSHOP” mark (the Opposed Mark) was filed by a Chinese company named Liantuo Chuangxiang with the Chinese Trademark Office (CTMO) on April 12, 2011, designating the goods of “Lipsticks; Nail polish; Cosmetics; Cosmetic brush, Eyebrow cosmetics; Perfumes; Eyebrow pencils; Rouge; Eye shadow; Mascara” in Class 3. Adobe filed an opposition based on its “PHOTOSHOP” mark (the Cited Mark) designating the goods of “Computer programs” in Class 9. Both the CTMO and the TRAB rendered the decisions that the arguments for opposition are not supported and the Opposed Mark shall be approved for registration. Dissatisfied with the TRAB decision, Adobe filed the appeal before the Beijing First Intermediate Court (first instance court), which also dismissed Adobe’s claims. Adobe further filed the appeal before the Beijing High Court, requesting to revoke the first instance court decision and the TRAB Decision. The grounds for appeal are mainly as follows: the Cited Mark conforms to the standard of well-known trademark, and the registration of the Opposed Mark violates the provisions of Article 13 (2) of the Chinese Trademark Law 2001. The Opposed Mark and the Cited Mark constitute identical marks in terms of similar goods, and the registration of the Opposed Mark violates the provisions of Article 28 of the Chinese Trademark Law 2001. To support its claims, Adobe provided evidence to prove the long term and extensive promotion and use of the Cited Mark, such as introduction on thousands of books, relevant news reports and advertisements reported by hundreds of media such as People’s Daily, Guangming Daily, China Information World, China Computer World, etc., the prizes or awards granted to Adobe’s software product “Photoshop,” the “National Applied Information Technology Certificate Photoshop 6.0” held every year since 2001, the online downloads of software “Photoshop,” etc.
The Beijing High Court (second instance court) held that the evidence provided is sufficient to prove the Cited Mark is widely known to the relevant public in Mainland China, and has achieved well-known status. In this case, the Cited Mark bears strong distinctiveness. The Opposed Mark is identical with the Cited Mark and is a copy of the Cited Mark. Although the goods “Lipsticks, etc.” designated under the Opposed Mark and the goods “Computer programs, etc.” designated under the Cited Mark are different in terms of function, use, and etc., the use of the Opposed Mark will damage the close relationship between the Cited Mark and the goods “Computer programs,” weaken the distinctiveness of the Cited Mark and prejudice the interests of Adobe considering there is an overlap in the relevant public of goods under two marks, the Cited Mark bears strong distinctiveness and has achieved well-known status and the Opposed Mark is identical with the Cited Mark. Thus, the application of the Opposed Mark has violated Article 13(2) of the Chinese Trademark Law 2001.
In sum, Adobe’s grounds for appeal are established and supported by the Court. The first instance court decision ascertained the facts improperly, applied the laws and regulations improperly, and shall be amended.