On January 13, 2009, Anhui Fengtan Wine Sales Co., Ltd., known before June 8, 2010 as Anhui Haomeisi Wine Sales Co., Ltd., applied to register “好美思 HERMES and device” in China under application No. 7163694. The designated goods were distilled alcoholic beverages, bitters, anisette and other goods in Class 33.
After preliminary approval and publication of the application, Hermès International S.A. of France filed an opposition within the statutory period. The Trademark Office approved registration. On June 1, 2012, Hermès applied to TRAB for review of that decision.
Opposition review
Hermès argued that its HERMES marks registered for bags and clothing were well known and submitted supporting evidence. It contended that the disputed mark imitated its well-known mark, that registration would mislead consumers and damage its interests, and that the application was made in bad faith and infringed its prior trade-name rights.
On December 2, 2013, TRAB approved registration of the disputed mark. Hermès challenged the decision before the Beijing No. 1 Intermediate People's Court. That court dismissed its claims, finding no infringement of its prior trade-name rights and no “adverse effects” within the meaning of the Trademark Law. Hermès appealed to the Beijing High People's Court.
Final appeal
The appellate court found clear differences in the overall visual impression of “好美思 HERMES and device” and Hermès' “HERMES and device” mark. The shared word HERMES alone did not establish that the disputed mark reproduced or imitated the Hermès mark. Even though the latter had previously been recognised as well known for clothing and bags, the disputed mark would not mislead the relevant public or damage Hermès' interests.
Although HERMES had gained a certain reputation as a trade name through the clothing and bag business, alcoholic beverages differed substantially from clothing and bags. The disputed composite mark also differed substantially from that trade name. The relevant public would therefore not mistakenly assume a connection between them, and the disputed mark did not damage Hermès' prior trade-name rights.
The court further explained that “other adverse effects” under Article 10(1)(8) concerned harm caused by a sign itself to China's public order and public interests in political, economic, cultural or other spheres. The disputed mark had no such adverse effects.
The Beijing High People's Court dismissed the appeal and upheld registration of the disputed mark.
Commentary
Cross-class protection of well-known marks may be assessed by reference to dilution or confusion. The dilution approach focuses on whether the challenged conduct weakens the mark's distinctiveness; the confusion approach focuses on whether it misleads or confuses the relevant public. Cross-class protection is not unlimited.
In this case, the court applied the confusion standard and did not support Hermès' claim to cross-class protection. The substantial differences between the designated goods of the respective marks meant that consumer confusion was unlikely.
Commentary by Li Yang, Associate Professor, School of Law, Soochow University.
Case references: appeal (2016) Jing Xing Zhong No. 2504; first instance (2014) Yi Zhong Xing (Zhi) Chu Zi No. 5948; TRAB Shang Ping Zi [2013] No. 127659.
Source: http://ip.people.com.cn/n1/2016/0923/c136655-28735490.html
