Haagen-Dazs as a famous American ice cream brand, is successfully developed by one of the world's largest food companies, General Mills, Inc.(hereafter as “General Mills”). Recently, General Mills found use of the trademark "Haager-Dasz" in other goods and brought the case before the court for trademark infringement.
In June 2003, a natural person Yin Xing applied the registration of NO.3601603 "Haager-Dasz"(hereafter as the alleged trademark) as a trademark in Class 25, covering the goods of clothes, underwear, shoes and caps. The mark was approved by the preliminary examination. During the period of preliminary publication, Gerneral Mills filed an opposition against the alleged trademark before the Trademark Office (TMO) under the State Administration for Industry and Commerce (SAIC) but failed. Then Gerneral Mills applied for reexamination of the alleged trademark before the Trademark Review and Adjudication Board (TRAB) under the SAIC. However, the TRAB denied Gerneral Mills’s claim and approved the registration of alleged trademark. Then General Mills appealed the case to the court.
Before the court, General Mills cited trademarks of No. 993504 “哈根逹斯" (“Haagen-Dazs” in Chinese version) and No. 269217 "Haagen-Dazs" in April 1997 and November 1986 respectively. The two trademarks were certified to be used in Class 30 for ice cream. After years’ of use and publicity, the two cited trademarks become well-known trademarks among the public and enjoyed high reputation. "哈根逹斯" was a Chinese translation for "Haagen-Dazs", and “Haagen-Dazs” was a term created by General Mills. The alleged trademark "Haager-Dasz" was almost the same in terms of letter combinations and constituted malicious copy and plagiarism of the “Haagen-Dazs”.
At trial, the court held that one of the cited trademark “哈根逹斯” is a well-known trademark before the application for registration of the alleged trademark “Haager-Dasz” and the alleged trademark has a certain connection with the other cited trademark “Haagen-Dazs”. It was mostly likely to confuse the public as to the source of the products, weakening the distinctiveness of the well-known trademark, and damage the interest of General Mills. Therefore, the court made a first-instance judgment in favor of General Mills and rejected the registration of “Haager-Dasz”.
The TRAB did not agree with the first-instance ruling and appealed the case before the Beijing Higher People's Court. The final decision is still pending.
