(By Luo Yanjie) Today, we will introduce all of our opinions on yesterday’s case.

Lawyer’s opinions:

The reason why the two courts made different conclusions than the Trademark Office and the Board is that the court does not blindly follow the Similar Products and Services Form. With that in mind, we will share our opinions on the legal issues in this case:

1. The preconditions for trans-class protection of well-known trademarks

Article 13 of the Trademark Law provides:

“Where a trademark for which the application for registration is filed for use on non-identical or dissimilar goods is a reproduction, imitation, or translation of the well-known mark of another person that has been registered in China, misleads the pub1ic, and is likely to create prejudice to the interests of the well-known mark registrant, it must be rejected for registration and prohibited from use.”

This article is the so-called trans-class protection of well-known trademarks. In the case, Nike used this as the sole ground to try and block the opposed trademark’s application. But, neither the Board nor the court that finally supported Nike approved Nike’s claims because the reference did not meet the preconditions for trans-class protection. For a well-known trademark to receive trans-class protection, it must meet the following two preconditions:

 (1) It was a well-known trademark when the opposed trademark application was made

This is the main reason why the reference trademark could not be deemed a well-known trademark, as the court found that all the evidence submitted by Nike was created after the opposed trademark’s application date. This system is beneficial to protect the stability of the trademark that applied first.

 (2) The classes are linked to each other, or there will be damage to the reputation of the well-known trademark

Although the law regulates that the well-known trademarks can enjoy trans-class protection, that protection has limits—namely there must be a definite link. In the case, the opposed trademark had a link with the reference trademark. But, because the reference trademark did not receive well-known trademark status, Nike did not acquire trans-class protection.

2. The basis for judging similar products

As described above, although Nike’s reference trademark did not acquire well-known trademark protection, the first and second instance courts directly viewed the class of the opposed trademark, Class 9 (glasses) and the class of the reference trademark, Class 25 (clothing), as similar classes. From this, they directly applied the first application principle, and refused the opposed trademark’s application. The court’s decision to go beyond the regulations of the Similar Products and Services Form aroused the dissatisfaction of the Board, which then appealed. But, in fact, the court has full power and authority to make that decision.

According to Article 15 of the Interpretation on Several Issues Concerning Use of Law in the Hearing of Civil Trademark Cases, the general understanding of the public on similar trademarks must be taken into consideration when making a comprehensive decision on whether or not products and services are similar under Article 15, Paragraph 1 of the Trademark Law. The International Classification Form of the Trademark Products and Services and the Similar Products and Service Form can be used as a reference for the decision. Although the interpretation is only for deciding whether a product is similar during the product infringement hearing, it clearly shows that although courts have to reference the forms when making the decision, they actually also have the power to make a different decision.

Moreover, the fact that the court went beyond the regulation provided in the Similar Products and Services Form under these circumstances may help protect justice and preventing squatting. The form is updated every five to six years, and the real state of society is complicated, so the form’s drafting necessarily has defects. Therefore, the court must assess the situation and go beyond the regulation to protect good faith interests.

Lawyer Contacts

You Yunting：86-21-52134918  youyunting@debund.com/yytbest@gmail.com

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