Recently, Beijing Higher People's Court made a final ruling in favor of the Walt Disney Company, the trademark owner of “MICKEY MOUSE 米老鼠” against Happy Mickey (mark registered by a children's products manufacturer in Fujian province, hereafter as “Happy Mickey Co.”) The court affirmed the first instance ruling by Beijing No.1 Intermediate People’s Court and the registration of “百变米奇 BBMIQI” as a trademark on Class 25 should be cancelled except for goods of baby clothes and swimwear..
Happy Mickey Co. filed for “百变米奇”(pronunciation sounds like Mickey in Chinese) as a trademark before the Trademark Office of SAIC in 2003 and was approved registration in 2006 covering Class 25 on the goods of clothes, baby clothes, swimwear, etc.
“Mickey Mouse 米老鼠” is a globally recognized cartoon image and brand owned by the Walt Disney Company. In April 2009, the Walt Disney Company challenged the registration of trademark “百变米奇 BBMIQI” and filed an opposition before TRAB for trademark similarity and infringement.
After examination, the TRAB held that the opposed trademark is identical with or similar to the cited trademark for the same or similar goods and there is similarity between the two marks. For that the registration of “百变米奇 BBMIQI” as a trademark on Class 25 should be cancelled except for goods of baby clothes and swimwear.
Then the plaintiff, Happy Mickey Co. appealed before the Beijing No.1 Intermediate People’s Court. Upon review, the court affirmed the ruling by TRAB, and then the plaintiff appealed the case before the Beijing Higher People's Court accordingly.
After reexamination, the Beijing Higher People's Court held that the "米奇" as a part of the cited trademark pronounces like “Mickey” in Chinese, and to Chinese customers, “米奇” and “Mickey” are both synonyms of “Mickey Mouse”. The "百变" is just adjective describing "米奇" and fails to make "百变米奇" distinctive from “Mickey Mouse” substantially. The two marks might easily cause confusion among the public. Therefore, the opposed trademark is identical with or similar to the registered trademark for the same or similar goods and similarity between the two marks is constituted. The Beijing Higher People's Court then made a final decision affirming the first instance decision by Beijing No.1 Intermediate People’s Court.
