Protection of Well-known Trademarks Needs to Take into Account the Bad Faith of the Disputed Trademark and the Relevance of the Designated Goods and Services | Administrative Litigation Case for Trademark Opposition Appeal against “威斯汀 (Wei Si Ting – Westin in Chinese); WESTIN SINCE 1993” | Linda Liu & Partners
Judgment Gist
Before the filing date of the opposed trademark, Westin Hotel Management, L.P. (“Westin L.P.”) successively operated hotels with the brand name “威斯汀 (Wei Si Ting – Westin in Chinese)” in Shanghai, Beijing, Guangzhou and other cities, and prominently used the “威斯汀 (Wei Si Ting – Westin in Chinese)” and “WESTIN” marks (Registration Nos. 773944 and 773940, respectively “Cited Mark 1” and “Cited Mark 2”) in the business activities of each hotel. The hotels operated by Westin L.P. have received a number of honorary titles and have been consistently and widely promoted in various national, local and industry newspapers and periodicals. Before the filing date of the opposed trademark, Cited Marks 1 and 2 have already enjoyed a high reputation amongst the relevant public with respect to hotel services. The former Trademark Review and Adjudication Board (“TRAB”) once protected Cited Marks 1 and 2 on the grounds that they enjoyed a high reputation with respect to hotel services. Cited Marks 1 and 2 have been widely known to the relevant public in China before the filing date of the opposed mark, and have constituted Well-known Trademarks with respect to hotel and restaurant services. The opposed trademark “威斯汀 (Wei Si Ting – Westin in Chinese); WESTIN SINCE 1993” entirely incorporated Cited Mark 1 “威斯汀 (Wei Si Ting – Westin in Chinese)” and Cited Mark 2 “WESTIN”, and the words “SINCE 1993” coincide with the time when Westin L.P. registered Cited Marks 1 and 2 in China. The goods “Cocoa products, Mooncakes, Pastries” designated by the opposed mark are closely related to the hotel and restaurant services designated by Cited Marks 1 and 2. The use of the opposed mark with respect to the above goods will easily mislead the relevant public and damage the legitimate rights and interests of Westin L.P. over the Well-known Trademarks. As such, the application of the opposed mark is in violation of Article 13.2 of the Trademark Law of 2001.
Case Information
Case Summary
The opposed trademark was filed by Jinsong QI (“the Opposed Party”) on 16 January 2008, with the application number 6512348, and the designated goods are “Cocoa products; Tea; Cakes; Candies; Mooncakes; Pastries; Rice cakes; Cereal preparations; Starch for food” in Class 30 (“the Opposed Mark”). The Opposed Mark was preliminarily approved for publication by the Trademark Office on 27 December 2009. Westin Hotel Management, L.P. (“Westin L.P.”) filed an opposition against the Opposed Mark within the statutory period. Westin L.P. claimed that Westin L.P. filed an application for “威斯汀 (Wei Si Ting – Westin in Chinese)” (Application No. and Registration No. 773944, “Cited Mark 1”) and “WESTIN” (Application No. and Registration No. 773940, “Cited Mark 2”) on 27 September 1993, and the designated services are “Hotels; Restaurants” in Class 42 (old classification in 1993). Cited Marks 1 and 2 are well-known trademarks; The Opposed Mark is an imitation of the Cited Marks, and would damage the rights and interests of Westin L.P.’s well-known trademarks, and violates the provisions of Article 13.2 of the Trademark Law of 2001. As such, Westin L.P. requested that the Opposed Mark be rejected.
The Trademark Office did not support Westin L.P.’s opposition requests, and Westin L.P. filed an opposition appeal against the opposition decision. The former TRAB made an opposition appeal decision to approve the registration of the Opposed Mark on 3 September 2013. Westin L.P. was not satisfied with the decision and filed an administrative lawsuit with the Beijing No. 1 Intermediate People’s Court (“the First Instance Court”).
The First Instance Court held that the Cited Marks owned by Westin L.P. have already been widely known to the relevant public in China, and constituted well-known trademarks in the hotel and restaurant services. The Opposed Mark entirely incorporates the Cited Marks, and the text “SINCE 1993” therein coincides with the time when Westin L.P. filed the applications for the Cited Marks in China. Considering the distinctiveness and fame of the Cited Marks, the above similarities cannot be a coincidence. As such, the Opposed Mark constitutes an imitation of Cited Marks 1 and 2. The goods “Cocoa products; Tea; Cakes; Candies; Mooncakes; Pastries; Rice cakes; Cereal preparations; Starch for food” designated by the Opposed Mark are related to the hotel and restaurant services where the Cited Marks are well-known, and the evidence on record also shows that the plaintiff also provided pastries such as mooncakes and etc. to customers in business activities. If the Opposed Mark is used with respect to the above goods, it is easy to mislead the relevant public to believe that the goods were provided by the same entity, and thus it may damage the interests of the plaintiff as the owner of the well-known trademarks. Therefore, the application of the Opposed Mark is in violation of the provisions of Article 13.2 of the Trademark Law.
Accordingly, the First Instance Court decided to revoke the opposition appeal decision in dispute and ordered the former TRAB to make a new decision. Jinsong QI was not satisfied with the first-instance judgment and appealed the first-instance judgment to the Beijing Higher People’s Court (“the Second Instance Court”). The Second Instance Court held that before the filing date of the Opposed Mark, the Cited Marks have been widely known to the relevant public in China, constituting well-known trademarks in the hotel and restaurant services. The Opposed Mark entirely incorporates the Cited Marks and the texts “SINCE 1993” therein coincides with the time when Westin L.P. registered Cited Marks 1 and 2 in China. It was not improper that the First Instance Court found that the Opposed Mark constituted an imitation of Cited Marks 1 and 2. The goods “cocoa products” and etc. designated by the Opposed Mark have a strong correlation with the hotel and restaurant services that are approved for use under Cited Marks 1 and 2. If the Opposed Mark is used with respect to the above goods, it can easily mislead the relevant public and damage the legitimate rights and interests of Westin L.P. enjoyed over the well-known trademarks. Based on the above, the Second Instance Court dismissed the appeal and upheld the original judgment.
Attorney’s Opinion
This case involves cross-class protection of well-known trademarks. Although the Opposed Mark in this case entirely incorporated Westin L.P.’s Chinese and English trademarks and trade names, i.e. “威斯汀 (Wei Si Ting – Westin in Chinese)” and “WESTIN”, Westin L.P. did not file and register the above-mentioned trademarks with respect to the related goods in Class 30. According to the Chinese Classification Book of Similar Goods and Services, “Pastries; Mooncakes; Candies” and other goods in Class 30 are not similar to “Hotels; Restaurants” services in Class 43 that Westin L.P.’s trademarks are previously registered with respect to. Therefore, obtaining cross-class protection for well-known trademarks is the key to preventing the registration of the Opposed Mark in this case.
However, as we all know, the judicial recognition of well-known trademarks has strict standards and conditions, especially after 2007, the Supreme People’s Court has adopted a series of measures to strictly control the judicial determination of well-known trademarks from legislation to procedures, from the necessity of recognition and the standards for well-known trademarks. Therefore, it is extremely difficult to obtain well-known trademark protection judicially after 2007, and this case is one of several cases in which our firm has successfully helped our clients obtain well-known trademark protection in judicial proceedings.
In this case, in order to prove that the Cited Marks of Westin L.P. constitute well-known trademarks and the registration of the Opposed Mark will damage the rights and interests of the Westin L.P.’s well-known trademarks, we have taken the following countermeasures:
I. Be proactive in helping the client gather evidence. Although the client has operated a number of hotels in China and continued to promote and use the “威斯汀 (Wei Si Ting – Westin in Chinese)”and “WESTIN” trademarks, it was difficult to collect evidence in support of these trademarks’ use, sales volume, industry rankings and other evidence in China due to the reason that the client is a foreign hotel management company. To this end, we were proactive in gathering relevant evidence for our client. For example, our firm took the initiative to collect the publicity and coverage of the client’s hotels in relevant media as well as the industry rankings of the client’s hotels in various official yearbooks at the China National Library. We also used third-party commercial databases to collect the client’s advertisements in China over the years. Furthermore, we also collected evidence on the Internet that the client used the trademarks “威斯汀 (Wei Si Ting – Westin in Chinese)”and “WESTIN” with respect to products such as mooncakes. The collected evidence was finally accepted by the court, which greatly helped the final victory of the case;
II. Collect and submit trademark protection records of the client in other trademark administrative cases. As the client often entrusted different agent firms in China to file trademark oppositions, opposition appeals, invalidation actions, etc., the decisions and judgments of relevant cases are often scattered in different firms. In order to prove the protection of the client’s trademarks in China, we advised the client to collect, sort out and submit the decisions on the protection of its trademarks by the relevant competent authorities. These decisions played a positive role in the determination of well-known trademarks in this case;
III. Emphasize the originality of the client’s trademarks. In this case, the trademarks “威斯汀 (Wei Si Ting – Westin in Chinese)”and “WESTIN” were coined words created by the client, and the Chinese trademark was an original Chinese transliteration that the client created based on its English trademark. It cannot be a coincidence that the Opposed Mark entirely incorporated the client’s Chinese and English trademarks. Therefore, we highlighted in our pleadings the fact that “the trademark ‘WESTIN’ is created by the client based on the English words ‘WEST’ and ‘INTERNATIONAL’, while ‘威斯汀 (Wei Si Ting – Westin in Chinese)’ is the Chinese transliteration originated by the client.” This also played a positive role in proving the bad faith that the Opposed Mark is an intentionally plagiarized mark of our client’s trademarks;
IV. Grasp the details of the trademark involved in the case and dig out information that is beneficial to the client. In this case, in addition to the client’s trademarks “威斯汀 (Wei Si Ting – Westin in Chinese)”and “WESTIN”, the Opposed Mark also incorporated the “SINCE 1993” part. Although this part takes only small proportion in the Opposed Mark, we found that the client’s Cited Marks “威斯汀 (Wei Si Ting – Westin in Chinese)” and “WESTIN” were filed in China in 1993, and the client’s Westin Hotels also entered China at this time. It is clearly no coincidence that the timing is so similar. Therefore, we have also emphasized this content in the opposition arguments and the pleadings to highlight the bad faith in the part of the opposed party to imitate and the possibility of misleading consumers by the Opposed Mark. This claim was supported by the judges in the first-instance and second-instance. The court held that if the Opposed Mark is used with respect to the above-mentioned goods, it will easily mislead the relevant public to mistakenly believe that they were provided by the same entity, thus damaging the interests of the plaintiff as the owner of the well-known trademark.
V. Emphasize the relevance of the goods “Cakes; Candies; Mooncakes; Rice cakes; etc.” designated by the Opposed Mark and the service “hotel” designated by the Cited Marks. Cakes and so on are common commodities in hotel catering business activities, especially hotels with a large scale often launch the mooncakes, cakes and other goods bearing its own brand in the business operation. Therefore, although the goods and services are in different classes and dissimilar, they do have a certain degree of relevance. If the Opposed Mark is approved for registration, it will obviously cause confusion amongst the relevant public.
It can be seen from this case that in the cases of cross-class protection of well-known trademarks, in addition to the popularity of the cited trademark, the similarity of the disputed trademark and the cited trademark, it should also be comprehensively taken into consideration the bad faith in the part of the applicant of the disputed trademark in imitating the cited trademark and the relevance of the goods and services designated by the disputed trademark and the cited trademark. If the cited trademark enjoys a high reputation, the malicious imitation of the disputed trademark is obvious, and the relevance of goods/services is high, it can be presumed that the use of the disputed trademark will cause a likelihood of confusion amongst the relevant public and damage the rights and interests of the cited trademark as a well-known trademark.
Link to the Case Judgment
