Recently, Beijing No.1 Intermediate People's Court made its first instance in a trademark lawsuit in favor of Mary Kay Inc., which revoked the decision of the Trademark Review and Adjudication Board (TRAB) under the State Administration for Industry and Commerce and rejected the registration of No. 6647904 trademark “玫琳凯 MARYKAY” applied by Hebei Changli Better Wine Limited (hereinafter referred to as Better Wine Ltd).
The Mary Kay Inc. of the US, one of the world’s largest manufacturers of skin care and cosmetics, set up its first factory outside the US in Hangzhou, China in 1994. In 1998 Mary Kay Inc. applied for registration of two trademarks, No. 1275186 “MARY KAY” and No. 1380186 “玫琳凯 (the Chinese version of “MARY KAY”)”, which were approved to be used on goods of cosmetics products.
In 2008, Better Wine Ltd. applied for registration of the NO.6647904 “玫琳凯 MARYKAY” trademark on Class 33 covering goods of alcohol drink including wine and brandy. Within the opposition period, Mary Kay filed an opposition against the NO. 6647904 “玫琳凯 MARYKAY” trademark before SAIC, but was rejected. Then Mary Kay Inc. applied for review before TRAB. Nevertheless, the TRAB approved the registration of the opposed trademark.
Mary Kay Inc. then appealed before Beijing No.1 Intermediate People's Court, claiming that the two cited trademarks had been used by Mary Kay Inc. for many years and were recognized as well-known trademarks in China. The opposed trademark was a copy of the cited trademarks. And the coexistence of the marks would cause confusion among consumers. Meanwhile, the opposed trademark was similar to the company name of “玫琳凯”, which infringed the prior right of use by Mary Kay Inc. Therefore, the registration of the opposed trademark should not be approved.
After examination, the court held that the evidence provided by Mary Kay Inc. can prove that the two cited trademarks had become well-known trademarks on cosmetic products before the application of the opposed trademark. The opposed trademark was the combination of the two well-known trademarks “玫琳凯” and “MARYKAY”. Therefore, the application of the opposed trademark by the defendant constituted inappropriate use of the reputation of the well-known trademark. Based on the facts, the court rejected the decision of TRAB and ordered TRAB to reexamine the case.
