Protection shall be given to a trademark and a trade name for their prior
reputation
Jack Zhang and Henry Han
2/4/2015
Brief Introduction on the Administrative
Litigation Case of the Trademark “MK & device”
Abstract
The first-instance court sustains the prior
reputation of “MARY KAY” – the trademark and
trade name of Mary Kay Inc., holds a view that
the trademark “MK & device” (hereinafter
referred to as “Disputed Trademark”) resembles
Mary Kay Inc.’s cited trademarks “MARY KAY”
and “MK MEN”, and therefore does not
approve the Disputed Trademark to be
registered. (Please be noted that the case now
has been under the second instance)
The Disputed Trademark
The Cited Trademark
The Cited Trademark
Brief Introduction
Yiwu City Lang Tao Cosmetics Co., Ltd.
(hereinafter referred to as “Lang Tao Company”)
submitted the application to register the
Disputed Trademark designating to the goods of
facial cleanser, cosmetics and toothpaste in
Class 3 to the Trademark Office of State
Administration for Industry and Commerce of
the People’s Republic of China (hereinafter
referred to as “TMO”). Mary Kay Inc. filed
opposition against the Dispute Trademark,
holding a view that it resembles those
trademarks “玫琳凯”, “MK MARY KAY” and
“MK MEN” in identical or similar goods, as well
as infringes other prior rights of Mary Kay Inc.’s.
TMO overruled the request of Mary Kay Inc.,
determining that the Disputed Trademark could
be approval to be registered. Mary Kay Inc.
dissatisfied with the determination and filed
appeal to Trademark Review and Adjudication
Board of State Administration for Industry and
Commerce of the People’s Republic of China
(hereinafter referred to as “TRAB”) with the
same reasons. TRAB held a view that the
Disputed Trademark was similar to those cited
trademarks owned by Mary Kay Inc. in similar
goods, and therefore overruled the application
of registration of the Disputed Trademark. In
March of 2014, dissatisfying with the
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determination made by TRAB, Lang Tao
Company raised administrative litigation to
Beijing No. 1 Intermediate People’s Court
(hereinafter referred to as “first-instance court”)
with the following reasons: (1) the Disputed
Trademark “MK & device” is not similar to the
cited trademarks mentioned above, for the
consisting elements are obviously different; (2)
the designated goods of the Disputed
Trademark and cited trademarks are also not
similar, for the goods of facial cleanser and
toothpaste are different from those of
cosmetics which the cited trademarks mainly
designate to.
Shanghai Heng Fang Intellectual Property
Consulting Co., Ltd. (hereinafter referred to as
“HFG”), commissioned by Mary Kay Inc.,
designates Lanny LI (attorney at law) and Jack
ZHANG (attorney at law) to join in the lawsuit.
The Intricacies and Disputed Points of the Case
First of all, there is the significant difference in
overall vision between the Disputed Trademark
and the cited trademarks. Secondly, it is “MARY
KAY”, other than “MK”, that is the well-known
trademark of Mary Kay Inc.
Following is the main opinions of Lang Tao
Company:
1. The Disputed Trademark is obviously
different from the cited trademarks in
the whole vision.
2. The Disputed Trademark is designed by
Lang Tao Company, with no meaning, and
of high distinctiveness.
3. In
practice,
several
trademarks
containing the English letters “MK” have
already been registered successfully.
Lang Tao Company provided the
registration
information
of
the
trademarks containing the English letters
“MK”.
The Evidence and Opinions Supported by the
First-instance Court
HFG did a lot of work to prepare for the
litigation. On one hand, HFG actively
communicated with the attorney of TRAB – the
defendant of the litigation. On the other hand,
HFG prepared large quantity supplementary
evidence as follows:
1. The statistics for advertisement and
promotion of the products of the brand
“MARY KAY” in the past years;
2. The statistics for sales and market ranks
of the products of the brand “MARY KAY”
in the past years;
3. The awards and prizes granted to the
brand “MARY KAY”;
4. The utilizing condition of the brand “MK
MEN”;
5. The appreciation and feedback to the
brand “MARY KAY” from the consumers
on the internet.
The Main Opinions in the Statement of HFG
Attorneys’ is as follows:
1.
“MARY KAY” is Mary Kay Inc.’s main
trademark and trade name which have
been being used since 1989 when they
started to be registered, resulting in
extremely high reputation and influence
in the relevant public. The trademark
“MARY KAY” has been granted as wellknown trademark on the goods of
cosmetics in Class 3.
2. The two letters “MK” are separately the
first letter of the trademark’s two words
“MARY KAY”. The two letters are
permanently used as an abbreviation of
the trademark and trade name “MARY
KAY”. Through the use of combination,
“MK” has been closely associated with
“MARY KAY” and has been an
equivalently significant and distinctive
part in the trademark “MK MARY KAY”.
Therefore, the Disputed Trademark is
easy to confuse the relevant public,
leading the public to associate it and its
goods with, and/or to think that its goods
come from Mary Kay Inc.
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3. It is indeed that there is a certain
difference between the Disputed
Trademark and the cited trademarks, but
it shall be fully considered that the first
impression and cognitive habit have been
formed in the relevant public when
judging the similarity among the
trademarks. Mary Kay Inc. has been using
“MK” and “MARY KAY” in combination
for a long time, which makes the
consumers think of the brand “MARY
KAY” when they are at the first sight of
“MK”. Hence, the consuming habit and
the market pattern that have been
shaped by Mary Kay Inc.’s efforts of
investment, and the trust benefit of the
consumers thereof shall be fully
protected, which requires to eliminate
the possibility of consumers’ confusion
and to overrule the application of the
Disputed Trademark.
Judgment of the First Instance
According to the large quantity of evidence of
prior reputation of the brand “MARY KAY”, the
first-instance court finally decided to accept the
third party -- Mary Kay Inc.’s opinions of
response, fully considering the influence that
brought to the possibility of trademark
confusion by the prior reputation of the
trademark and trade name “MARY KAY”,
holding a view that the trademark “MK & device”
and the cited trademarks “MARY KAY” and “MK
MEN” are similar, and therefore overruled the
claims of Lang Tao Company.
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