Dilution Doctrine
The other approach is for trade mark owners to rely on the concept of trade mark 鈥榙ilution鈥�, which was recently introduced as a legal concept in 皇冠体育app, in the Interpretations of the Supreme People鈥檚 Court on Several Issues Concerning the Application of Law to the Trial of Cases of Civil Disputes over the Protection of Well-Known Trade Marks.
There are three typical situations in which a court will find there has been 鈥榙ilution鈥�:
1) where the distinctiveness of the well-known mark has been weakened;
2) where there has been a diminishment of the well-known mark鈥檚 reputation in the relevant market; and
3) where there has been an improper ulitization of the well-known mark鈥檚 reputation.
Three conditions must be met for a claim of trade mark dilution to be made out:
1. The relevant public of the disputed mark must be aware of the unique connection between the well-known trade mark owner and its goods or services.
2. Upon seeing the disputed mark, the relevant public must associate it with the well-known trade mark. Usually, if the disputed mark is identical with or highly similar to the well-known trade mark, this will be readily established.
3. The relevant public must be able to discern that the disputed mark has no connection to the well-known trade mark. This level of cognition may be influenced by several factors, including the price, characteristics of the goods and services provided by the owner bearing the well-known trade mark, and whether the owner operates across different industries, etc.
Several recent judgments demonstrate how the concept of dilution is being applied by the courts.
In Unilever N.V. v TRAB (case 1058 of (2012) Yi Zhong Xing Chu Zi, 20 April 2012), the No. 1 Intermediate Court held that registration of the disputed mark 鈥楶ond鈥檚 and Pang Shi in Chinese characters鈥�:
鈥� in relation to 鈥渋nfant formula; sanitary pads; antisepsis paper鈥� would lead to confusion among the relevant public, given the Plaintiff鈥檚 mark 鈥楶ang Shi in Chinese characters鈥�; and
鈥� in relation to 鈥渢onics; air freshening preparations鈥� would damage the unique, sole and stable connection between the Plaintiff and 鈥渃osmetics鈥�, thus weakening the distinctiveness of the Plaintiff鈥檚 well-known trade mark 鈥楶ang Shi in Chinese characters鈥� and cause damage to the interests of the Plaintiff.
Another judgment issued by the same court, the Beijing No. 1 Intermediate Court went even further.
In Sichuan Jian Nan Chun Liquor Factory v TRAB (case 494 of (2012) Yi Zhong Xing Chu Zi), the Court held that the registration of the disputed mark No. 4082115 鈥楯ian Nan Chun in Chinese characters鈥�* in relation to 鈥渞ice, wheat flour鈥�:
鈥� violated Article 28 of 皇冠体育app鈥檚 Trade Mark Law, as the disputed mark was confusingly similar to the Plaintiff鈥檚 prior registered mark 鈥楯ian Nan Chun in Chinese鈥�, in relation to similar goods 鈥渃ookies, corn flour, corn flakes鈥�; and
鈥� also violated Article 13 (2) of 皇冠体育app鈥檚 Trade Mark Law, as the disputed mark dilutes the reputation of the well-known trade mark No. 284529 鈥楯ian Nan Chun in Chinese characters鈥� registered in relation to 鈥渓iquor鈥�.
*The first two characters of the disputed mark 鈥楯ian Nan Chun in Chinese characters鈥� are different from the first two characters of the Plaintiff鈥檚 mark 鈥楯ian Nan Chun in Chinese characters鈥�.
Interestingly, TRAB was unsuccessful at first instance and appealed to the Beijing Higher Court. The Beijing Higher Court upheld the first instance decision, rejecting the disputed application; however, it concluded that the Beijing No. 1 Intermediate Court鈥檚 finding in relation to dilution was incorrect and should be rectified. The Beijing Higher Court held that:
鈥� the goods 鈥渞ice, wheat and flour鈥�, in relation to which registration of the disputed mark had been sought, were distinguishable, in terms of both function and usage, from the goods, liquor, in relation to which the well-known trade mark 鈥楯ian Nan Chun in Chinese characters鈥� had been used; and
鈥� the registration and use of the disputed mark would not damage the interest of Sichuan Jian Nan Chun Liquor Factory.
The rectification made by the Beijing Higher Court shows clearly the disadvantage that can attach to a defensive filing. Because the Plaintiff owned a prior registration in relation to similar goods, the Court dismissed, as being redundant, the Beijing No. 1 Intermediate Court鈥檚 finding of dilution.
Conclusion
It will be advantageous for trade mark owners, where possible, to obtain decisions from the CTMO, TRAB or the courts affirming the well-known status of their trade marks. They will then be able to rely on evidence that shows that use of the disputed mark will dilute the distinctiveness of the well-known mark. They should, however, be aware that 鈥榳ell-known mark鈥� status will not necessarily provide protection across all 45 classes. It may, for example, still be possible for a third party to register the mark in relation to goods that are considered to be sufficiently different.
Trade mark owners not able to obtain well-known mark recognition, may, if there is sufficient budget, benefit from defensive registration in selected additional classes.
