Unitalen representing Power Dekor Group well-knownto get well-known trademark protection again by the Supreme Court

February 15, 2015

Following the Supreme Court recognized “Quanu” as well-known trademark in December 2014, a case represented by Unitalen, again the attorneys of Unitalen, Zhang Yazhou and Wang Heshu, in representation for Power Dekor Co., Ltd. in the administrative proceeding of No. 4362508 "圣象 + SHENGXIANG "trademark opposition review before the Supreme Court for retrial, received the Xing Ti Zi No. 28 judgment by the Supreme Court (2014) recently. This final judgment again recognized the cited trademark “Power Dekor and Device” of Power Dekor Group in Class 19 commodities of "floor" has been well-known before the application date of the opposed trademark on November 15, 2004, and the Class 25 commodities of “clothes” designated by the opposed trademark are not similar to the commodity of floor, but in circumstances that the cited trademark has very high significance and visibility, it shall be given a strong degree of protection. In accordance with the second paragraph of Article 13 of the original Trademark Law, the judgment is as follows: The opposition trademark shall not be granted registration, and the judgment by Beijing High Court and Beijing First Intermediary Court as well as the review decision by the Trademark Review Board are cancelled.

[Lawyer’s Comment] Power Dekor had been recognized as well-known trademark in the retrial of administrative proceeding for trademark rights by the Supreme Court in 2013, which was represented by Unitalen (The case was selected as one of the top ten Intellectual Property cases by the Supreme Court in 2013), and this judgment was the second one received by Power Dekor, recognizing Power Dekor as well-known trademark in the retrial by the Supreme Court. In this case, the Trademark Review and Adjudication Board and the court of first instance did not recognize the cited trademark as well-known before the date of application; and although the court of second instance accepted that the cited trademark has been well-known before the application date of the opposition trademark, it upheld the conclusion of the first instance and review stage on the grounds that there are some differences between the two trademarks and the product classification differs much from each other, so registration of the opposed mark will not mislead the public. In the retrial, the Supreme Court clarified the determination of similar trademarks shall take into account the significance and popularity of the prior trademark, and further clarified that the cited trademark with distinctiveness and popularity of well-known level, shall be granted relatively broader protection. The highlight of this judgment is that, combining the identified facts of the case, the Supreme Court cited the provisions of Article IX of "Supreme People's Court Interpretation of Issues on Applicable Laws for Civil Dispute Cases Involving the Protection of Well-known Trademarks" (i.e.: the relevant public are made to believe that the sued trademark has considerable connection with the well-known trademarks, which weakens the significance of well-known trademarks, deteriorates the market reputation of well-known trademarks or take unfair advantage of the market reputation of well-known trademarks, complying with the situation of the second paragraph of Article 13 of Trademark Law -"Misleading the public, which results in that the interests of the well-known trademark holder could be compromised"), and identified that although the commodity class designated by the opposed trademark applied by a third person was not similar to the cited trademark, the application for registration in the commodity class of "clothes" by such third person still constituted imitation of the cited trademark in the commodity of "floor", with subjective intent for improper use of its goodwill, and the approval of registration would further detriment the legitimate interests of Power Dekor.