5. Coca-Cola

The “冰露” (“Ice Dew” in Chinese) flavored water produced by Coca-Cola Company (Coca-Cola) was formally marketed in 2010. However, an individual by the name of Zhang in Guangdong Province tried to register the mark “冰露” on canned fruit, canned mushrooms and milk drinks, which was opposed by Coca-Cola. Later the TRAB decided to approve the registration of the trademark, Coca-Cola filed an administrative action in Beijing First Intermediate People’s Court.

In August 2014, the court made the first-instance ruling and reversed the TRAB.

It was reported that in August 2003, Zhang applied for registration of the “冰露” trademark (opposed trademark) under S/N 675199, designating canned fruit, canned mushrooms and milk drinks in Class 29.

Coca-Cola timely filed an opposition with the Trademark Office, but the opposition was dismissed. Therefore, Coca-Cola requested a review with the TRAB.

Coca-Cola argued that goods of canned mushrooms and dairy products of the opposed trademark are similar to goods of whey beverages of the cited trademark, and the trademarks are similar, thus constituting similar trademarks on similar goods.

The TRAB held that dairy products (milk-based) of the opposed trademark are similar to the goods of juice drinks (drinks) of the cited trademark, and the two trademarks have constituted similar trademarks on similar goods on the ground of possible confusion that may be caused among consumers as to the origin of the goods. Accordingly, the TRAB ruled to reject registration of dairy products (milk-based) on the opposed trademark and approve the registration of other goods for reexamination.

Coca-Cola was dissatisfied with the TRAB ruling and filed an administrative action before Beijing First Intermediate People’s Court.

At trial, Coca-Cola alleged that the cited trademark has been a well-known trademark for goods of nonalcoholic beverages, water (beverages) and mineral water in Class 32 after years of promotion and use prior to the application date of the opposed trademark. The application for registration of goods other than milk drinks (milk-based) has led the opposed trademark to be similar to the cited trademark on related goods. Therefore, the cited trademark should be granted cross-protection and the opposed trademark should not be approved for registration.

The court admitted the evidence, such as Coca-Cola’s media coverage, as sufficient to prove that the cited trademark has obtained certain degree of reputation in the bottled water market prior to the application date of the opposed trademark. The goods of the opposed trademark and the cited trademark are both commonly consumed drinks and food, and they are usually shelved in the same or approximate areas in supermarkets, therefore, the goods are basically the same in terms of function, distribution channels and consumer base. Based on the above, the court revoked the TRAB decision and ordered the TRAB to make a new decision.

(Translated by Wang Hongjun)