Recently, Beijing No.1 Intermediate People's Court made a first-instance decision in favor of French Sephora Inc. over the registration of the trademark “詩芙籣 Sephola” filed by a person surnamed Chen.
In 2005, Chen filed the trademark application for “詩芙籣Sephola” before Trademark Office of P.R.C. , on Class 3 covering goods of cosmetics for animals.
After the “詩芙籣Sephola” trademark was publicized, Sephora Inc. filed an opposition but was denied by Trademark Office of China. Sephora Inc. then brought the case before the Trademark Review and Adjudication Board (TRAB) for review.
TRAB held that the two marks were used on different classes and the coexistence of the two marks would not cause any market confusion. In addition, the evidences Sephora Inc. provided failed to prove that Sephora Inc. had gained certain reputation on classes of the identical or similar goods before the application for registration of the opposed trademark.
Disagreed with the ruling, Sephora Inc. filed an administrative lawsuit before Beijing No.1 Intermediate People's Court. Before the court, Sephora Inc. cited 3 trademarks, No.749589 “SEPHORA”, No.4059187 “丝芙兰” and No. 3747800 “诗芙华” on Class 3covering goods of soaps, essential oil and cosmetics etc.. Sephora Inc. alleged that the opposed trademark of “詩芙籣 Sephola” was similar with the 3 cited trademarks in both spelling and sounds and the covered classes of goods. Therefore, Sephora Inc. claimed that the registration of the opposed trademark infringed its prior rights of trade name.
After examination, the court held that the opposed trademark in English was identical with the cited trademark of “SEPHORA” except for one letter. The sound of the opposed trademark in Chinese was similar with the cited marks of “丝芙兰” and “诗芙华”, and all of the alleged marks are transliterated words. Meanwhile, the class of goods covered by the opposed trademark is associated with the cited marks in terms of function, use, sales channels and consumers. What’s more, Sephora Inc. had gained high reputation globally by commercial advertising before the opposed trademark was applied for registration.
Based on these facts, the court overturned the decision of TRAB and ordered TRAB to review the case.
