China: Pet Hospital Trademark Rejected for Being Similar to BARBIE
- By Fei Dang
- Published 12 October 2023
- On February 17, 2023, the Beijing IP Court announced that it closed the first instance case of an administrative dispute regarding the appeal of a non-approval registration decision on No. 18179646A “芭比堂” in relation to “pet cleaning; veterinarian assistance; etc.” in Class 44. By recognizing the “芭比堂” similar to the famous toy brand “BARBIE”, the Beijing IP Court maintains the decision to disapprove the registration of the pet hospital brand “芭比堂”.
- Case History
- On October 28, 2015, Yunchong (Beijing) Animal Medical Technology Co., Ltd. (the Plaintiff) applied for the registration of No. 18179646A “芭比堂” which was preliminarily approved and published for opposition in relation to “animal breeding; artificial insemination (for animal); in vitro fertilization (for animal); aquaculture; pet cleaning; veterinarian assistance” in Class 44.
- MATTEL, INC. (the Third Party) raised an opposition to the CTO against the No. 18179646A “芭比堂” on the grounds that it is similar to its series of “芭比” and “BARBIE” trademarks, including two well-known trademarks No. 986140 “芭比” and No. 261727 “BARBIE” in relation to toys.
- According to the CTO, the said “BARBIE” trademark was recognized as well-known trademark by the CTO and it had established a one-on-one correspondence with the Chinese trademark “芭比”. The opposed “芭比堂” completely incorporates the well-known “芭比” and does not form any meaning that is obviously different from the cited trademarks (Note: “堂” in Chinese refers to a location, e.g. house, room, etc.). The registration thereof would be easy to cause confusion and misidentification. In a word, the No. 18179646A “芭比堂” was disapproved for registration by the CTO.
- During the appeal for the said decision for the non-approval of the registration, the TRAB maintained the non-approval decision, on the ground that Mattel’s “BARBIE” and “芭比” trademarks have retained high fame upon-long term use and established stable corresponding relation, the most identifiable part “芭比” in the “芭比堂” is corresponding to the cited “BARBIE” with similar pronunciation and their co-existence on the same or similar services would result in confusion and misidentification among the relevant public.
- Due to dissatisfaction with the TRAB’s decision above, the case was brought to the Beijing IP Court by the Plaintiff. According to the Court, when it comes to applying Article 30 of the Trademark Law, it shall consider factors, such as the similarity of trademarks, similarity of goods, distinctiveness and fame of the cited trademark, degree of attention of the relevant public, subjective intention of the applicant, and so on, as well as the interaction of the said factors and whether it is easy to confuse the relevant public.
- In this particular case, the Court considered the following factors:
- 1) the designated service of the disputed trademark herein is similar to those of some of the cited trademarks in Class 4;
- 2) the distinctive part “芭比” of the disputed trademark “芭比堂” herein is similar to the cited “BARBIE” in terms of pronunciation;
- 3) the Third Party has proved that its “芭比” and “BARBIE” have retained high fame in relation to toys in Class 28, and well acknowledged by the relevant public and established stable relations;
- 4) toys and pet cleaning services, and so on are related to a certain extent in terms of function, consuming subject, and so on, and it may lead to confusion among the relevant public;
- 5) the use evidence submitted by the Plaintiff was mostly reflecting the use of “芭比堂动物医院 (Ba Bi Tang Animal Hospital)” and such use of the enterprise name does not equal the use of the trademark. Further, the use of a trademark outside the current case cannot be considered as the use of the disputed trademark herein;
- 6) the factor of cross-class protection for the well-known trademark shall also be taken into consideration.
- In conclusion, the Beijing IP Court rejected the Plaintiff’s claim. It is reported that the Plaintiff has appealed to judgment to the second instance court.
- Comment
- The involved disputed trademark “芭比堂” is a chained-branded animal hospital owned by the Plaintiff, whereas the cited trademarks “芭比”/”BARBIE” are the famous toy brands owned by MATTEL, INC.
- MATTEL as the Third Party, in this case, cited seven trademarks including, but not limited to, one “BARBIE” (No. 4532735) in Class 44 which is in the same Class as that of the disputed “芭比堂” herein, and “芭比” (No. 986140)/”BARBIE” (No. 261727) in relation to toys in Class 28 which have been recognized as well-known trademarks in China.
- In terms of trademark comparison, the CTO, TRAB and the Court all recognized that the “芭比堂” is similar to the No. 4532735 “BARBIE” with reasoning as follows: 1) both “芭比” and ”BARBIE” have retained high fame upon long term use in China and the Chinese and English thereof have established stable correspondence; 2) “芭比堂” completely incorporates “芭比” and therefore are similar; 3) the “芭比” in the “芭(ba)比(bi)堂” is corresponding to the “BARBIE” and they have similar pronunciation.
- It is worth noting that the additional Chinese character “堂” in the “芭比堂” does not add sufficient distinctiveness to distinguish itself from “芭比”, as it is stated in the Trademark Examination and Review Guide (“Guide”) that “where a trademark is merely composed of a distinctive part of other’s prior trademark and some characters that express the location of services or the goods to be manufactured, sold and used, which is easy to confuse the source of the goods or service among the relevant public, it shall be determined as similar trademarks.” In this case, the “堂” in Chinese can be referred to as a “hall” or “a tall room” which makes it fall into the said circumstance.
- Further, the well-known status of the “芭比” (No. 986140)/”BARBIE” (No. 261727) also played an important factor when considering the similarity between the “芭比堂” and “BARBIE” in Class 44. As it is pointed out by the Beijing IP Court, “when a third party also owns a well-known trademark in relation to dissimilar goods, it shall not only determine whether the disputed trademark and the cited trademark are similar in relation to similar goods, but also consider the factor of the cross-class protection of the well-known trademark…Otherwise, when a right owner simultaneously owns a prior trademark in relation to similar goods and a well-known trademark in relation to dissimilar goods, its obtained protection is less than those who own a well-known trademark in dissimilar goods. This is contradictory to the true intention of the Trademark Law.”
- In other words, in terms of trademark comparison, the well-known status, as well as the correspondence of the Chinese and English of the “芭比”/”BARBIE” trademarks in toys, are the most important links in recognizing the similarity between the “芭比堂” and “BARBIE”, even though the two brands are in different industries: the “芭比堂” is already similar to “芭比” according to the Guide above, and then similar to “BARBIE” due to the well-known status and stable correspondence of the “芭比”/”BARBIE”. Since there was a cited trademark of “BARBIE” in relation to similar service as that of the “芭比堂” in Class 44 existed, the condition of constituting similar trademarks in relation to similar service provided in Article 30 of the Trademark Law had been met.
- This case has been brought to the second instance court by the Plaintiff and is still ongoing. Nevertheless, it is still enlightening to observe how well-known status trademarks could affect the comparison of trademarks, even though the disputed “芭比堂” trademark is disapproved for registration due to “similar trademarks in relation to similar service” other than directly applying the cross-class protection of the well-known trademarks.