Recently, Beijing No.1 Intermediate People's Court made the first instance decision in favor of Coca-Cola and rejected the registration of No. 3675199 trademark “冰露” by Zhang.
The mineral drinking water brand of “Ice Dew 冰露” is produced by Coca-Cola Company(hereinafter as “Coca-Cola”) and was put into China market in 2010. However in 2003, Zhang applied for registration of “冰露” trademark registration in Class 29 covering goods of the canned fruit, canned mushrooms and milk drink.
Coca-Cola filed an opposition against the No. 3675199 “冰露” trademark before the Trademark Office of the State Administration for Industry and Commerce (SAIC), but was rejected. Then Coca-Cola applied for review before the Trademark Review and Adjudication Board (TRAB) of the SAIC.
After review TRAB held that the opposed trademark was used on milk drink and the cited trademark was used on juice drink. The opposed trademark constituted similar trademark with the cited trademark and the coexistence of the two marks covering similar goods would cause confusion of consumers. Therefore, TRAB revoked the registration of the opposed trademark used on milk drink but approved the registration of the mark used on other goods.
Unsatisfied with the decision, Coca-Cola then filed an administrative lawsuit before the court, claiming that the cited trademark “Ice Dew 冰露” had been a well-known trademark in Class 32 on goods of non alcoholic drink, water drink, mineral water drink through advertising and had been used for many years before the application of the opposed trademark. Thus, the cross-classes protection for the cited trademark was necessary. The registration of the opposed mark on all goods except milk drink constituted trademark similarity to the cited mark. Therefore, the registration of the opposed trademark should not be approved.
After examination, the court held that evidence provided by Coca-Cola was sufficient to prove that the cited trademark had a certain reputation on goods for bottled drinking water. The goods covered by the opposed trademark and the cited trademark were similar goods in function, marketing channel and target consumers. Based on the facts, the court rejected the decision of TRAB and ordered TRAB to reexamine the case.
