4. Mary Kay
Incorporated in the United States in 1963, Mary Kay, Inc. is one of the world’s largest direct sales companies of skin care and cosmetics products. It opened its first overseas factory in Hangzhou, Zhejiang Province in 1994. Hebei Changli Genghao Wine Co., Ltd. (Changli Company) planned to register a trademark “玫琳凱MARY KAY” on liquor (the opposed mark), which was opposed by Mary Kay Inc. Later the Trademark Review and Adjudication Board (TRAB) of the State Administration for Industry and Commerce approved registration of the opposed trademark, Mary Kay Inc. thus filed an administrative action. Recently, Beijing First Intermediate People’s Court revoked the TRAB decision in its first-instance ruling and ordered the TRAB to make a new decision.
Changli Company applied to register the opposed trademark No. 6647904 in April 2008, designated for use on wine, brandy and other goods in Class 33.
Mary Kay timely filed an opposition against the opposed mark, but the opposition was dismissed.
Subsequently, Mary Kay requested review by TRAB, mainly on the grounds that the opposed mark is a reproduction and imitation of its well-known trademarks, which is likely to cause public confusion and harm its legitimate rights and interests. Mary Kay also claimed that the opposed trademark has interfered with the prior rights of its business name.
Mary Kay alleged well-known status for two cited trademarks: No.1275186 “MARY KAY” trademark, filed for application by Mary Kay Inc. in February 1998 and approved for use on cosmetics and lipstick in Class 3; No. 1380186 “玫琳凱” (Chinese transliteration of “Mary Kay”) trademark, filed for application by Mary Kay Inc. in November 1998 and approved for use on cosmetics and concealers in Class 3. Currently both trademarks are in force.
After the TRAB approved the registration of the opposed trademark, Mary Kay instigated an administrative proceeding in Beijing First Intermediate People’s Court.
Mary Kay contended that the two cited trademarks have been well-known for goods of cosmetics after long-term use and extensive publicity, and the opposed trademark is a reproduction and imitation of the two cited trademarks. The opposed trademark and the two cited trademarks co-exist in the relevant market, making it easy to cause public misunderstanding and harming its rights and interests. In the meanwhile, the opposed trademark is similar to the business name “玫琳凱”, thus the registration of the opposed trademark has also interfered with the prior rights of its business name.
In this regard, the court held that the evidence submitted by Mary Kay is sufficient to establish that the two cited trademarks have been recognized as well known trademarks on goods of cosmetics prior to the application date of the opposed trademark. The opposed trademark is a combination of the two cited trademarks and constituted plagiarism, duplication and imitation of the well-known trademarks of Mary Kay Inc., and thus Changli Company’s application for registration of the opposed trademark has constituted an unfair exploration of the market reputation of others’ well-known trademarks. Accordingly, the court made the aforesaid ruling.
