Recently, the Beijing court released the top ten typical cases of judicial protection of trademark authorization and confirmation 2024 for the third consecutive year, including the cross-class protection case involving the well-known MICHELIN trademark by the Beijing High Court, (2023) Jingxing Zhong No. 5131. After comprehensively considering the distinctiveness and popularity of the well-known MICHELIN trademark, the degree of reproduction and imitation of the trademark in dispute, the nature and Class of the goods, the Beijing High Court emphasized that the cross-class protection scope of well-known trademarks should correspond to their degree of fame and distinctiveness. This case is of reference significance for how to apply Article 13 (3) of the Trademark Law to obtain cross-class protection for well-known trademarks in China.
On 7 March 2016, Guangdong Meiqilin Interactive Technology Co., Ltd. (“Meiqilin A”) applied for registration of the “美奇林科技MECHELEN M and Design” trademark No. 19240349 (“trademark in dispute”). Its mark is a combination trademark of Chinese and English characters and graphics. The Chinese part includes the trade name of Meiqilin A in Chinese, whose pronunciation is similar to that of MICHELIN, and the Chinese version of TECHNOLOGY. On 27 December 2018, the trademark in dispute was transferred to Guangdong Meiqilin Interactive Technology Co., Ltd. (“Meiqilin”), an affiliate of Meiqilin A and the third party in this case. After an opposition procedure, the trademark in dispute was approved for registration on the goods such as “building blocks (toys); toy cars; smart toys; playing cards; sports balls; dumbbells; archery bows; shuttlecocks; fishing rods” in Class 28 on 14 June 2019.
The Michelin Group (“Michelin”) is one of the world’s largest tire manufacturers, and its MICHELIN brand ranks 284th in the list of the world’s top 500 brands in 2024. In China, Michelin has applied for more than one thousand trademarks, including the “MICHELIN and Design” trademark No. 10757553 (“cited trademark 1”) and the “米其林” trademark No. 10757437 (“cited trademark 2”) filed in 2012, the “米其林” trademark No. 519749 (“cited trademark 3”) filed in 1989, and the “MICHELIN” trademark No. 136402 (“cited trademark 4”) filed in 1979. “米其林” is the Chinese form of “MICHELIN”. Michelin believes that the trademark in dispute and its cited trademarks 1 and 2 constitute similar trademarks used on the same or similar goods; it constitutes a reproduction and plagiarism of the well-known cited trademarks 3 and 4; and its registration and use will mislead the public and damage Michelin’s legitimate rights and interests. By Article 13 (3), Article 30, Article 44, and Article 45 of the Trademark Law, Michelin filed an application for invalidation of the trademark in dispute on 8 June 2020.
China National Intellectual Property Administration (“CNIPA”) found that although the cited trademarks 1 and 2 were approved for registration on the goods including “toy cars; playing cards; sports balls; exercise equipment; sports equipment; competitive gloves; fishing tackle” in Class 28 before the filing date of the trademark in dispute, their registration on goods including “playing cards” has been cancelled after an appeal for cancellation. The trademarks of “米其林”, “MICHELIN”, and the Design of Tire Man registered and used by Michelin on products such as wheels were recognized as being well-known to the relevant public in the opposition decision regarding a Design Trademark No. 02708 (2005) of the CNIPA in 2005. On 6 May 2021, the CNIPA made a ruling that the trademark in dispute was declared invalid on the goods such as “building blocks (toys); toy cars; smart toys” but was maintained on other goods, including playing cards based on the following grounds: 1. The trademark in dispute on the goods including playing cards and the cited trademark 1 do not constitute a violation of Article 30 of the Trademark Law: the “MECHELEN” part in the mark of the trademark in dispute and the distinctive part of the cited trademark 1, namely “MICHELIN”, are similar in letter composition, pronunciation, and visual effects, and have respectively constituted similar marks. The goods of the trademark in dispute, such as “building blocks (toys); toy cars; smart toys”, and the goods of the cited trademark 1 are similar, but the other goods of the trademark in dispute, including playing cards, and the goods of the cited trademark 1 are different.2. The trademark in dispute and the cited trademark 2 do not constitute a violation of Article 30 of the Trademark Law: The mark of the trademark in dispute and that of the cited trademark 2 have significant differences in terms of text composition and visual effects, and consumers can distinguish them with general attention, and their coexistence will not cause confusion or misunderstanding about the source of goods.3. The registration of the trademark in dispute on the other goods including “playing cards” does not violate Article 13 (3) of the Trademark Law: The mark of the trademark in dispute is quite different from the marks of Michelin’s well-known cited trademarks 3 and 4 in terms of text composition, pronunciation, visual effects, etc., and does not constitute a copy or imitation of the marks of the cited trademarks 3 and 4. The other goods of the trademark in dispute, including “playing cards”, are different from the goods of the cited trademarks 3 and 4, including “tires”, in terms of functional use, sales locations, and consumer objects. Therefore, the registration of the trademark in dispute on the other goods, including “playing cards”, should not mislead the public and thus damage the interests of Michelin.
Michelin was dissatisfied with the ruling of the CNIPA and filed a lawsuit with the Beijing Intellectual Property Court (“first instance court”). The first instance court held that although the evidence submitted by Michelin can prove that cited trademarks 3 and 4 have a certain degree of popularity in tires, the other goods including playing cards in Class 28 for which the trademark in dispute is approved for use are different from the tires for which cited trademarks 3 and 4 are famous in terms of function, purpose, production department, sales channel, consumer group, etc. In addition, the distinctive identifying part of the mark of the trademark in dispute is the Chinese part of “美奇林科技”, and its design part also accounts for a large proportion, so it is different from the marks of the cited trademarks 3 and 4 in terms of constituent elements and overall visual effects. The registration of the trademark in dispute is unlikely to cause the relevant public to misunderstand the source of the goods, weaken and reduce the popularity of the cited trademarks 3 and 4, and thus damage the interests of Michelin. Therefore, the trademark in dispute on the other goods, including “playing cards”, does not constitute a violation of Article 13 (3) of the Trademark Law. On 16 April 2023, the first instance court ruled to dismiss Michelin’s lawsuit.
Michelin appealed to the Beijing High Court (“second instance court”). The second instance court held that the scope of cross-class protection for well-known trademarks is proportional to the popularity and distinctiveness of the well-known trademarks. The higher the popularity and distinctiveness of a well-known trademark, the wider the scope of cross-class protection should be. It was determined that the cited trademarks 3 and 4 have gained a high degree of public recognition in China and should be protected as well-known trademarks. Although the playing cards and other goods used for the trademark in dispute are different from the tires for which the cited trademarks 3 and 4 are famous in terms of functional use, target consumers, production departments, etc., based on the high popularity of the cited trademarks 3 and 4 in tires, placing them under trademarks with similar visual and pronunciation may still mislead consumers. Consumers may mistakenly believe that there is some connection between the trademark in dispute and the cited trademarks 3 and 4 or Michelin, which may weaken the distinctiveness of the cited trademarks 3 and 4 or improperly use the market reputation of the cited trademark 3 and 4, causing possible damage to Michelin’s interests in the well-known cited trademarks 3 and 4. On 8 February 2024, the second instance court ruled to revoke the first instance judgment and the CNIPA’s ruling and require the CNIPA to make a new ruling.
The grounds for obtaining cross-class protection for well-known trademarks based on Article 13 (3) of the Trademark Law include confusion and dilution. The former refers to whether the trademark in dispute will cause confusion among the relevant public about the source of the goods, and the latter refers to whether the use of the trademark in dispute will mislead the public, causing the distinctiveness of the well-known trademark to be weakened, vilified, or improperly exploited. The second instance court did not discuss whether there was confusion. After comprehensively considering the factors such as distinctiveness and popularity of the well-known trademark, the degree of reproduction and imitation of the trademark in dispute, the nature and class of the goods, it determined that the trademark in dispute constituted a cross-category dilution of the cited trademarks 3 and 4, thereby granting them cross-category protection against dilution. This provides a judicial model for China’s well-known trademark dilution protection mechanism.
On 7 March 2016, Guangdong Meiqilin Interactive Technology Co., Ltd. (“Meiqilin A”) applied for registration of the “美奇林科技MECHELEN M and Design” trademark No. 19240349 (“trademark in dispute”). Its mark is a combination trademark of Chinese and English characters and graphics. The Chinese part includes the trade name of Meiqilin A in Chinese, whose pronunciation is similar to that of MICHELIN, and the Chinese version of TECHNOLOGY. On 27 December 2018, the trademark in dispute was transferred to Guangdong Meiqilin Interactive Technology Co., Ltd. (“Meiqilin”), an affiliate of Meiqilin A and the third party in this case. After an opposition procedure, the trademark in dispute was approved for registration on the goods such as “building blocks (toys); toy cars; smart toys; playing cards; sports balls; dumbbells; archery bows; shuttlecocks; fishing rods” in Class 28 on 14 June 2019.
The Michelin Group (“Michelin”) is one of the world’s largest tire manufacturers, and its MICHELIN brand ranks 284th in the list of the world’s top 500 brands in 2024. In China, Michelin has applied for more than one thousand trademarks, including the “MICHELIN and Design” trademark No. 10757553 (“cited trademark 1”) and the “米其林” trademark No. 10757437 (“cited trademark 2”) filed in 2012, the “米其林” trademark No. 519749 (“cited trademark 3”) filed in 1989, and the “MICHELIN” trademark No. 136402 (“cited trademark 4”) filed in 1979. “米其林” is the Chinese form of “MICHELIN”. Michelin believes that the trademark in dispute and its cited trademarks 1 and 2 constitute similar trademarks used on the same or similar goods; it constitutes a reproduction and plagiarism of the well-known cited trademarks 3 and 4; and its registration and use will mislead the public and damage Michelin’s legitimate rights and interests. By Article 13 (3), Article 30, Article 44, and Article 45 of the Trademark Law, Michelin filed an application for invalidation of the trademark in dispute on 8 June 2020.
China National Intellectual Property Administration (“CNIPA”) found that although the cited trademarks 1 and 2 were approved for registration on the goods including “toy cars; playing cards; sports balls; exercise equipment; sports equipment; competitive gloves; fishing tackle” in Class 28 before the filing date of the trademark in dispute, their registration on goods including “playing cards” has been cancelled after an appeal for cancellation. The trademarks of “米其林”, “MICHELIN”, and the Design of Tire Man registered and used by Michelin on products such as wheels were recognized as being well-known to the relevant public in the opposition decision regarding a Design Trademark No. 02708 (2005) of the CNIPA in 2005. On 6 May 2021, the CNIPA made a ruling that the trademark in dispute was declared invalid on the goods such as “building blocks (toys); toy cars; smart toys” but was maintained on other goods, including playing cards based on the following grounds: 1. The trademark in dispute on the goods including playing cards and the cited trademark 1 do not constitute a violation of Article 30 of the Trademark Law: the “MECHELEN” part in the mark of the trademark in dispute and the distinctive part of the cited trademark 1, namely “MICHELIN”, are similar in letter composition, pronunciation, and visual effects, and have respectively constituted similar marks. The goods of the trademark in dispute, such as “building blocks (toys); toy cars; smart toys”, and the goods of the cited trademark 1 are similar, but the other goods of the trademark in dispute, including playing cards, and the goods of the cited trademark 1 are different.2. The trademark in dispute and the cited trademark 2 do not constitute a violation of Article 30 of the Trademark Law: The mark of the trademark in dispute and that of the cited trademark 2 have significant differences in terms of text composition and visual effects, and consumers can distinguish them with general attention, and their coexistence will not cause confusion or misunderstanding about the source of goods.3. The registration of the trademark in dispute on the other goods including “playing cards” does not violate Article 13 (3) of the Trademark Law: The mark of the trademark in dispute is quite different from the marks of Michelin’s well-known cited trademarks 3 and 4 in terms of text composition, pronunciation, visual effects, etc., and does not constitute a copy or imitation of the marks of the cited trademarks 3 and 4. The other goods of the trademark in dispute, including “playing cards”, are different from the goods of the cited trademarks 3 and 4, including “tires”, in terms of functional use, sales locations, and consumer objects. Therefore, the registration of the trademark in dispute on the other goods, including “playing cards”, should not mislead the public and thus damage the interests of Michelin.
Michelin was dissatisfied with the ruling of the CNIPA and filed a lawsuit with the Beijing Intellectual Property Court (“first instance court”). The first instance court held that although the evidence submitted by Michelin can prove that cited trademarks 3 and 4 have a certain degree of popularity in tires, the other goods including playing cards in Class 28 for which the trademark in dispute is approved for use are different from the tires for which cited trademarks 3 and 4 are famous in terms of function, purpose, production department, sales channel, consumer group, etc. In addition, the distinctive identifying part of the mark of the trademark in dispute is the Chinese part of “美奇林科技”, and its design part also accounts for a large proportion, so it is different from the marks of the cited trademarks 3 and 4 in terms of constituent elements and overall visual effects. The registration of the trademark in dispute is unlikely to cause the relevant public to misunderstand the source of the goods, weaken and reduce the popularity of the cited trademarks 3 and 4, and thus damage the interests of Michelin. Therefore, the trademark in dispute on the other goods, including “playing cards”, does not constitute a violation of Article 13 (3) of the Trademark Law. On 16 April 2023, the first instance court ruled to dismiss Michelin’s lawsuit.
Michelin appealed to the Beijing High Court (“second instance court”). The second instance court held that the scope of cross-class protection for well-known trademarks is proportional to the popularity and distinctiveness of the well-known trademarks. The higher the popularity and distinctiveness of a well-known trademark, the wider the scope of cross-class protection should be. It was determined that the cited trademarks 3 and 4 have gained a high degree of public recognition in China and should be protected as well-known trademarks. Although the playing cards and other goods used for the trademark in dispute are different from the tires for which the cited trademarks 3 and 4 are famous in terms of functional use, target consumers, production departments, etc., based on the high popularity of the cited trademarks 3 and 4 in tires, placing them under trademarks with similar visual and pronunciation may still mislead consumers. Consumers may mistakenly believe that there is some connection between the trademark in dispute and the cited trademarks 3 and 4 or Michelin, which may weaken the distinctiveness of the cited trademarks 3 and 4 or improperly use the market reputation of the cited trademark 3 and 4, causing possible damage to Michelin’s interests in the well-known cited trademarks 3 and 4. On 8 February 2024, the second instance court ruled to revoke the first instance judgment and the CNIPA’s ruling and require the CNIPA to make a new ruling.
The grounds for obtaining cross-class protection for well-known trademarks based on Article 13 (3) of the Trademark Law include confusion and dilution. The former refers to whether the trademark in dispute will cause confusion among the relevant public about the source of the goods, and the latter refers to whether the use of the trademark in dispute will mislead the public, causing the distinctiveness of the well-known trademark to be weakened, vilified, or improperly exploited. The second instance court did not discuss whether there was confusion. After comprehensively considering the factors such as distinctiveness and popularity of the well-known trademark, the degree of reproduction and imitation of the trademark in dispute, the nature and class of the goods, it determined that the trademark in dispute constituted a cross-category dilution of the cited trademarks 3 and 4, thereby granting them cross-category protection against dilution. This provides a judicial model for China’s well-known trademark dilution protection mechanism.