1. Provisions
Article 13 of the Chinese Trademark Law provides that a mark applied for on dissimilar goods shall not be registered, and its use shall be prohibited, if it reproduces, imitates or translates another party’s well-known trademark registered in China, is likely to mislead the public and may damage the interests of the well-known mark’s owner.
This provision extends protection of a well-known trademark registered in China to non-identical or dissimilar goods or services, commonly called cross-class protection. It does not provide protection in every class; the scope must be appropriate to the mark’s reputation.
2. Two Cases on the Scope of Protection
Case 1: Trademark infringement of Cartier International N.V. v. Yunnan Cartier Wedding Photography Co., Ltd.
Cartier International N.V. had registered “卡地亚” and “Cartier” in Class 14 for jewelry, jewelry products, precious stones and related goods. The defendant used “卡地亚” as its trade name and “卡地亚那” and “Cartirena” as trademarks for wedding photography services in Class 41. The court found that Cartier’s mark was well known for jewelry. Although the parties’ goods and services belonged to different industries and classes, both were consumer offerings associated with fashion and culture, and their relevant consumers overlapped. The court therefore found trademark infringement.
Case 2: Administrative dispute on trademark opposition review of YKK Corporation v. Ruianshi Libo Motor Vehicle Parts Co., Ltd.
YKK Corporation had registered “YKK” for zippers in China long before Ruianshi Libo Motor Vehicle Parts Co., Ltd. (Libo) applied for the identical mark for transmission shafts for land vehicles, crankcases for land vehicle components other than engines, automobiles, windscreen wipers, vehicle interior decoration products and related goods. In the opposition, opposition review and two instances of administrative litigation, Libo’s application was allowed because the parties’ goods were considered substantially different. YKK sought a retrial before the Supreme People’s Court.
On retrial, the Supreme People’s Court found that YKK’s evidence showed that zippers could be used in vehicle interior decorations, creating an upstream–downstream relationship between the products. YKK was an invented, distinctive word, and its mark had a strong reputation for zippers. These factors justified protection for vehicle interior decoration products. Protection did not extend to goods such as transmission shafts and automobiles, which were too remote from zippers.
3. Conclusion
The scope of cross-class protection depends on the mark’s distinctiveness, its recognition among the relevant public, the relationship between the goods and the balance of the parties’ interests. Protection is more likely where the goods are closely related, for example because they serve the same consumption field or consumers, or have an upstream–downstream relationship. A stronger reputation acquired through use also supports broader protection.
Cross-class protection in China is neither unlimited protection across all classes nor protection so narrow that it harms the rights holder. Its scope is determined by the principle of appropriate protection.
