Foreign enterprises ignore sound trademark strategies at their peril

In the administrative dispute where Hermès International, owner of the world famous French luxury brand “Hermès”, was dissatisfied with the dismissal by the Trademark Review and Adjudication Board’s (TRAB) of its application to cancel the Chinese-language homonymic trademark “愛瑪仕” (pronounced aimashi), whose registration was pirated by a certain domestic enterprise, the court ruled to uphold the TRAB’s ruling to dismiss the application in the first trial. The court held that the large majority of the documents submitted by Hermès were generated after the date of application for registration of the trademark “愛瑪仕”. Additionally, the court ruled that the relevant evidence presented by Hermès was insufficient to establish that its trademark was familiar to the Chinese public, and thus did not constitute an unregistered well-known trademark. This made it impossible to apply the protection of well-known trademarks provisions of the Trademark Law to the Hermès mark.

The product scope of the trademark “無印良品” (pronounced mujirushi ryohin in Japanese) that Ryohin Keikaku, owner of the famous Japanese miscellaneous goods brand, Muji, applied to register in China did not cover such goods as towels, hand cloths and other textiles in class 24 due to the trademark “无印良品” (pronounced wuyin liangpin in Chinese and using simplified characters that correspond to the traditional characters in the Japanese trademark) already having been registered for such goods in class 24 by a Chinese domestic enterprise.

Ryohin Keikaku submitted an opposition application to the Trademark Office and to the TRAB, and ultimately filed suit to the courts requesting a cancellation of the TRAB’s decision on Keikaku’s opposition claim. However, Keikaku failed in this endeavour. The appellant court held that the evidence failed to prove that the trademark “無印良品” had actually been used on goods in class 24 in China, or that the trademark was familiar to the public. Also, publicity and reports for the trademark had all occurred outside China, and thus it could not be established that the trademark had actually been used on goods in class 24. Accordingly, it was not possible to apply the provisions of the Trademark Law on malicious pirate registration and the handling thereof to afford it protection.