First instance does not preclude appeal victory

Essilor International (Compagnie Generale D’optique) obtained the registration in 1986 of the trademark ESSILOR in China (Figure 1) designating “various spectacles and frames for protecting or correcting vision” in Class 9. In 1999, ESSILOR registered the trademark 依视路 (the Chinese transliteration of ESSILOR – Figure 2) designating “spectacle lens (non-implantable)” in Class 9.

On 4 June 2010, Shanghai Hongcheng Optical filed an application for the registration of the trademark “eSSILOR依视路” (Figure 3) designating “industrial adhesives and curing agents”, in Class 1.

On 23 June 2011, ESSILOR filed an opposition with the China Trademark Office (CTMO) against the opposed mark, citing its prior registrations. The CTMO dismissed the opposition on 6 November 2012, considering that: (1) the designated goods of the opposed mark are not similar with those of the cited marks; and (2) the evidence is insufficient to prove that the opposed “duplicated or copied (its) well-known trademark” according to article 13.2 of the 2001 Trademark Law.

On 30 November 2012, ESSILOR filed for review with the Trademark Review and Adjudication Board (TRAB), citing article 13.2 (registered well-known trademark) and article 31 (prior right and prior used trademark of certain influence) of the 2001 Trademark Law, among others.