A 10-year fight over MONALISA trademark in China

MONALISA trademark case supervised by PRC Supreme Procuratorate eventually received favourite final decision on 14 July 2022. The judge unexpectedly reverses its decision after the mark owner exhausted all civil proceedings lasting for ten years which is unusual for trademark contentious cases, including requesting trade mark review before CNIPA, appealing to Beijing No.1 Intermediate People’s Court and Beijing Municipal High People’s Court, and filing retrial request to Supreme People’s Court.

The practical influence extended by this case is to bring the guidance over the criteria for (1) determining similar goods and/or services, (2) assessing the similarity between conflicting marks and cited marks, and (3) confirming if the applicant could extend legal protection of famous trade mark in particular class to its other marks with same or similar elements but under different classes. Additionally, another highlight is that the Supreme Procuratorate also initially organized experts hearing and relied on precedent rulings as complementary support to reach their conclusions.

Regarding how to determine similar goods and/or services, these factors are taken into considerations such as the purpose and the manufacture department of the product, its channels of distribution, and targeted consumers. Besides, the examiners are also supposed to review if the public would believe there is a connection existing between subjected trade marks. Nice Classification is also regarded as an alternative consideration when judging the degree of similarity. For example, in this case, both toilet bowls and showers are used for sanitary purpose and provided in home-improvement market, and served for same market segments. And they are categorized under Class 11 according to Nice Classification. Therefore, they are identified as similar goods.  

As for assessing the similarity between conflicting marks and cited marks, those aural and conceptual elements, and other factors such as figurative and colour or the combination of above elements are supposed to be examined in relation to target audience. For example, the cited mark in this case which is consisted of MONALISA and its Chinese corresponding letters is defined as similar to the conflicting mark which is a design logo of MONALISA since the elements of those two marks are substantially similar in terms of the word MONALISA itself.         

The last emphasis is to confirm that there is no default protection being extensive from existing famous mark to other trade marks in different class under the same holder. In some cases, the owner prefers to modify its logo or words based on existing marks to file new trademark applications under the same class. Others might register trade marks under different classes but with exactly same elements. In this scenario, this ruling is actually applicable to the later situation. In this case, the owner has registered an earlier trade mark in class 11, while his later application with identical logo as the earlier one has obtained comprehensive reputation in class 19. However, the court insists that the prior mark cannot enjoy the broader protection of later one even though there are similar logo but under different classes.     

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