Beijing Janlea Intellectual Property Institution accepted the entrustment from Guangzhou Bai Yun Shan Pharmaceutical Group to file opposition application against the trademark with reg. No. 29548812 “广药大健康“, and the trademark with reg. No. 29551656 “广药食疗“. Recently, as per Article 13-3 of the Trademark Law, China National Intellectual Property Administration decided to grant the protection on the opponent’s trademark “广药集团及图” (Guang Yao Ji Tuan in Chinese and the design), and decided that the opposed trademark is not allowed for the registration. The opponent’s opposition application gained support. Hence, the case is won.
Review of the case
The opposed party “Li Peng” has applied for registration of 2 trademarks, i.e. “广药大健康” (guang yao da jian kang in Chinese) with reg. No. 29548812, and “广药食疗” (guang yao shi liao in Chinese). 2 trademarks above gained initial approval on 20th January 2020, to be designed on the goods “Chinese rice budding”.
In the review of oppositions against the trademarks above, China National Intellectual Property Administration considered, the opponent priorly registered trademark “广药集团及图“ (guang yao ji tuan in Chinese and the design) with reg. No. 3851949 has been designed to use on the goods “medicine for human”, and enjoys high reputation because of the production and usage, furthermore, it has been protected as per Article 13 of Chinese Trademark Law. The prominent factors of the opposed trademark and the opponent’s trademark are both “广药” (guang yao in Chinese), it has posed the imitation to the opponent’s trademark which enjoys reputation. The approval for the registration of the opposed trademark is easier to mislead the public, hence, to damage the opponent’s benefits. As per Article 13-3 and Article 35 of Chinese Trademark Law, China National Intellectual Property Administration refused the application for the registration of the opposed trademark.
Analysis on the case
The opponent, Guangzhou Bai Yun Shan Pharmaceutical Group is one of famous domestic pharmaceutical manufactures, which has 25 medicine producers and institutions, amongst which are 12 China time-honored medicine brands, 10 century-old enterprises, over 100 TCM exclusive productions. The opponent’s trademark “广药集团及图“ (guang yao ji tuan in Chinese and the design) is used extensively as the group’s important business logo, it is widely known by the public, the opponent’s trademark “广药集团GPC” （guang yao ji tuan in Chinese and GPC）with reg. No. 3851949 has been recognized as well-known trademark in the invalidation case in year 2015.
In this case, the opposed trademark is designed to be used on the goods “Chinese rice pudding”, however, the opponent has gained the approval to register “广药白云山“ (guang yao bai yun shan in Chinese), “广药”（guang yao in Chinese）, “广药集团大南药及图“ (guang yao ji tuan da nan yao in Chinese and the design) on Class 30, the designated goods are “coco production; tea”, etc. the designated goods of two parties are not belong to similar goods, the opposed trademark and the opponent’s cited trademarks above did not pose similarity on similar goods.
As per Article 13-3 of Chinese Trademark Law, China National Intellectual Property Administration granted protection on the opponent’s registered well-known trademark via broke through the goods’ classification table, judged the opposed trademark shall not be approved for the registration. The opponent’s well-known trademark played crucial role in the case that go against similar trademark on non-similar goods.
Well-known trademark, as a specialized legal concept, enjoys the special protection that common trademarks don’t have, especially, it has obvious advantage in the registration and use of trademarks, activities in right defence of record of enterprise’s name. However, the well-known trademark as a kind of legal opinion, only can gain passive protection in specific cases. Enterprises should perfect the overall arrangement for the trademark after gained the recognition of the well-known trademark, should strengthen the protection on the trademark’s registration, use, monitoring, establish dual mechanism, i.e. active defense and passive protection.