BASIC FACTS:

NOVEMBER 2004: Mona Lisa Group ("Guangdong Mona Lisa New Materials Group Co., Ltd.", hereinafter referred to as the "Applicant") applied for registration of trademark No.4356344 "M MONALISA and Pictures" (see the following figure, hereinafter referred to as "Trademark in Dispute"), which was approved for use on Class 11 products (Lamps; Fan (Air Conditioning); Faucet; Washroom (Flush Toilet); Pedestal Pan; Water Purification Equipment and Machines; Heater) in September 2008. 

MARCH, 2012: Guangzhou Monalisa Building Materials Co., Ltd. (the exclusive owner of the cited trademark No.1558842, see the figure below) and Guangzhou Monalisa Sanitary Ware Co., Ltd. (hereinafter collectively referred to as the "opponents") filed a dispute application for the trademark in dispute with the Trademark Review and Adjudication Board (TRAB). 

NOVEMBER 2013: The TRAB ruled that the trademark in disputes should be revoked on products including cooking utensils, pressure cookers (electric pressure cookers), washroom (flush toilet) and pedestal pan, and maintained on other goods. The applicant then initiated the administrative litigation with Beijing No.1 Intermediate Court. 

FEBRUARY 2015: The court of first instance revoked TRAB’s ruling and asked TRAB to make a new ruling over the application of the trademark in dispute. The court of first instance held that the trademark No.1476867 "M MONALISA 蒙娜丽莎 and Figure" (the applicant claimed that it was the prior trademark as the basis of the trademark in dispute) was exactly the same as the trademark in dispute in terms of graphics and naming; the "ceramic tile" products approved for use by the former trademark and the "washroom (flush toilet), pedestal pan" products of the latter trademark all belong to ceramic building materials, which have strong correlation in functions, and may share the same sales channels and customers, hence belong to similar products. The prior trademark has been recognized as a well-known trademark, which has certain popularity, and the commercial reputation can continue on the trademark in dispute, so the cited trademark should not become an obstacle to the registration of the trademark in dispute in the relevant commodity classes. The TRAB and the opponent refused to accept first instance ruling, and filed an appeal with the Beijing Higher Court. 

JUNE 2016: The court of second instance rejected TRAB and the appeal of the opponent, holding that the trademark in dispute and the cited trademark did not constitute similar goods, and upheld the original judgment. 

COURT'S PROCEEDINGS

Subsequently, the complainants (opponents) jointly applied to the Beijing Municipal Procuratorate for supervision. After examination, the procuratorate submitted the case to the Supreme Procuratorate for protest. The Supreme Procuratorate organized all parties and domestic authorities to hold hearings according to law, and finally examined that the case met the protest requirements and filed a protest with the Supreme Court according to law. The Supreme Court accordingly ordered the Beijing Higher Court to retry the case. 

In March 2022, the Beijing Higher Court held a public hearing after reexamining the case. 

The complainant claims that the "washroom (flush toilet), pedestal pan" goods approved by the trademark in dispute and the "bathroom device" goods approved by the cited trademark constitute similar goods; the two trademarks are similar in terms of text composition, naming and elements, which constitute similar trademarks and should be invalidated. In addition, the argument in the second instance ruling that the trademark No.1476867 "M MONALISA 蒙娜丽莎and Figure" extends to the registration of the trademark in dispute could not be established. Except for the judgment of the second instance in this case, which found that the trademark in dispute did not constitute a similar trademark, other related trademarks of the applicant were all found to constitute similar trademarks. Therefore, this case belongs to the situation of inconsistent judgments on similar cases, which should be corrected. 

The retrial court held that, first of all, the similarity between the trademark in dispute and the cited trademark can be judged from the glyphs, pronunciation, meaning or graphic composition and color of the characters of the two trademarks, or the overall structures of the combinations of various elements, etc. In this case, the trademark in dispute is composed of the letters "M", "MONALISA" and figures, while the cited trademark is composed of the Chinese character "蒙娜丽莎" and the letters "Mona Lisa", hence the similarity can be ascertained in terms of letter composition, and the Chinese version of "MONALISA" in the trademark in dispute is also "蒙娜丽莎", so the two marks are similar in character composition, naming and elements, etc. According to the documented evidence, the trademark in dispute has not gained popularity on the products in disputed classes. On the contrary, there is evidence to prove that the cited trademark has a certain popularity on the approved commodity, so the relevant public may very easily take the commodities of the two marks as sharing the same subject or having a specific connection, which may easily lead to confusion. Therefore, the two marks constitute similarity in the sense of Trademark Law. 

Secondly, as for the prior mark extending to registration of the trademark in dispute, the applicant claims that the prior trademark was recognized as a well-known trademark in October 2006, and when the trademark in dispute was registered in November 2004, there were no sufficient evidences to prove that the prior trademark had gained high popularity, yet the applicant claimed that the prior trademark had high popularity on the class 19 product ("ceramic tile"), which was inconsistent with the class of disputed goods. Therefore, the applicant's claim of extension to registration lacked factual basis and could not be established. 

Thirdly, as regard to the inconsistent judgments on similar cases in the second instance hearing, since the examination on the trademark in disputes is affected by many factors, such as the time of conducting the examination, the environment in which the examination was made, the documented evidence, etc., the application, examination and approval of other trademarks would not be necessarily related to this case, nor can they serve as the basis for deciding this case. Moreover, the causes and procedures of other cases are mostly different from those of this case. Therefore, the existing evidence cannot necessarily confirm that there exists the scenario of "inconsistent judgments on similar cases" in the second instance judgment of this case. 

After retrial, in June 2022, Beijing Higher Court revoked the original judgments of first instance and second instance, deeming that the facts and applicable laws were falsely established in the judgments of first instance and second instance, and shall be revoked according to law, hence the ruling of TRAB was maintained. 

CONCLUSION

This case discusses in detail many controversial legal application issues, such as the applicable rules of Article 28 of the Trademark Law (2001), the boundaries of trademark registration and use with historical continuation, as well as the application for registration of trademark continuation, which has exemplary significance for the judgment of related cases. Ever since the establishment of the Intellectual Property Procuratorate Office of the Supreme Procuratorate, this case is the first one of its type among the trademark administrative litigation disputes that has been protested after examination, retried by the Supreme Court and was finally overruled.