Ground of Case

Shiseido Gypsum Industries Ltd. (hereinafter referred to as Shiseido Gypsum Company), as the registrant of the trademark in dispute, claimed registration of the trademark on September 12, 2012 on Class 19 product (alabaster; calcined gypsum; gypsum; gypsum board), while Shiseido Limited (Japan) (hereinafter referred to as Shiseido Company) is the registrant of the cited trademark 1, which was registered on Class 3 product (toilet soap; soap; detergent; toothpaste; tooth powder; cosmetics).

Legal Proceedings

In the trademark review stage, Shiseido Gypsum Company and Shiseido Company submitted relevant evidential materials, and the original Trademark Review and Adjudication Board made a decision of refusal of registration of the disputed trademark on October 11, 2016 in accordance with Article 13.3, Article 35.3 and Article 36 of the Trademark Law (2013). 

Shiseido Gypsum Company refused to accept the above decision and filed a lawsuit with Beijing Intellectual Property Court. After hearing the case, the court held that the trademark "Shiseido" of Shiseido Company recognized by the Trademark Review and Adjudication Board in the ruling constituted a well-known trademark on the "cosmetics" goods before the application date of the disputed trademark. However, except for the above-mentioned records recognized as well-known trademarks by administrative organs, Shiseido Company has not submitted nay evidence to prove that its trademarks have reached the well-known status. Therefore, the Beijing Intellectual Property Court held that the documented evidence was not sufficient enough to prove that the popularity of the cited trademark of Shiseido Company had reached the level of a well-known trademark before the application date of the disputed trademark. Accordingly, the court revoked the decision made by the Trademark Review and Adjudication Board, and ordered the National Intellectual Property Administration to make a new decision (the relevant duties of the Trademark Review and Adjudication Board shall be uniformly exercised by the National Intellectual Property Administration). 

The National Intellectual Property Administration and Shiseido Company refused to accept the judgment of the original trial, and filed appeals respectively with relevant evidential materials submitted in the second instance litigation stage. 

Case Analysis

According to Beijing Higher Court, Article 13.3 of the Trademark Law (2013) stipulates that "misleading the public so that the interests of the well-known trademark registrant may be damaged" indicates the scenario typical enough to make the relevant public think that other people's trademarks have a considerable degree of connection with the owner of well-known trademarks, while weakening the significance of well-known trademarks, derogating the market reputation of well-known trademarks, or improperly using the market reputation of well-known trademarks. Therefore, the cross-class protection of well-known trademarks includes not only the cross-class protection of well-known trademarks based on the confusion of the relevant public, but also the cross-class protection of well-known trademarks based on the association of the relevant public, which weakens the significance of well-known trademarks. 

According to the statistics of sales, tax payment and advertising expenses in China, the advertisements published in Chinese newspapers and magazines, the ranking data of the top 500 brands in the world and other materials submitted by Shiseido Company in the second instance lawsuit, the cited trademark of Shiseido Company was approved and registered in cosmetics as early as 1980, which enjoys high reputation around the world. Before the application date of the disputed trademark, the cited trademark 1 has been used and extensively publicized in China for a long time, and has won many honors with remarkable sales performance in the cosmetics industry as well as high popularity among the relevant Chinese public. Moreover, before and after the application date of the disputed trademark, many effective judgments have recognized the cited trademark 1 as a well-known trademark used in Class 3 cosmetics. Combined with the documented evidence, there is enough ground to conclude that the cited trademark 1 has been widely known in China and reached a well-known level in "cosmetics" products. 

The cited trademark 1 is composed of Chinese character "资生堂" (Shiseido), which has no specific meaning and strong inherent significance. The trademark in dispute is composed of the Chinese character "资生堂石膏" (Shiseido gypsum), which has covered all characters of the cited trademark 1, and is similar in terms of the textual composition and meaning, and has thereby constituted a copy and imitation of the cited trademark 1. Although products such as "alabaster; calcined gypsum; gypsum; gypsum board" approved for use on the trademark in dispute are distinctive from the "cosmetics" products on which the cited trademark is famous, under the circumstance where the cited trademark 1 has constituted a well-known trademark and the obvious identification part of the disputed trademark is completely consistent with the cited trademark 1, when the relevant public buys the goods approved for use by the disputed trademark, they may easily think that the disputed trademark is related to the cited trademark 1 to a certain extent, thus weakening the significance of the cited trademark 1 or improperly utilizing the market reputation of the cited trademark 1. Therefore, the application for registration of the disputed trademark violates Article 13.3 of the Trademark Law. 

On such ground, the Beijing Higher Court supported the requests for appeal of the National Intellectual Property Administration and Shiseido Company, and decided to revoke the administrative judgment of the Beijing Intellectual Property Court and reject the claim of Shiseido Gypsum Company.