Case Brief

Applicant (the third party in the first instance, the appellant in the second instance, and the petitioner for retrial): Guangzhou Monalisa Building Materials Co., Ltd. (hereinafter referred to as the building materials company), in Guangzhou, Guangdong Province.

Applicant (the third party in the first instance, the appellant in the second instance, and the petitioner for retrial): Guangzhou Monalisa Bath Ware Co., Ltd. (hereinafter referred to as the bath ware company), in Guangzhou, Guangdong Province.

Other party (the plaintiff in the first instance, the appellee in the second instance, and the respondent in the retrial): Monalisa Group Co., Ltd (hereinafter referred to as Monalisa company), in Foshan, Guangdong Province.

Other party (the defendant in first instance, and the appellant in second instance): China National Intellectual Property Administration, in Beijing.

The disputed trademark in this case is No. 4356344 "M MONALISA and device" trademark, which was applied for registration by Guangdong Monalisa New Materials Group Co., Ltd. (hereinafter referred to as new materials company, the name being changed to Monalisa Group during the second instance) on November 10, 2004, approved for registration on September 14, 2008, and approved for use on goods in Class 11 including "lamps, cooking apparatuses, pressure cookers (autoclaves, electric, for cooking), bathroom (water closets), toilet bowls" and the like.

The cited trademark in this case is No. 1558842 "蒙娜麗莎 Mona Lisa" trademark, which was applied for registration by Guangzhou Modern Kangti Apparatus Co., Ltd on December 28, 1999, approved for registration on April 21, 2001, and approved for use on goods in Class 11 including "steam bath apparatus, Sauna bath installations, bath fittings" and the like. The cited trademark was assigned to building materials company and the bath ware company on April 18, 2012.

The trademark No. 1476867 "M MONALISA蒙娜麗莎 and device" was applied for registration by Nanhai Qiaodong Ceramics Co., Ltd on July 12, 1999, approved for registration on November 21, 2000, and approved for use on goods in Class 19 including "floor tiles, not of metal; ceramic tile; wall tiles, not of metal, for building; inlaid bricks, for building" and the like. The name of the trademark registrant was changed to the new materials company on June 28, 2011.

On March 30, 2012, the building materials company and the bath ware company filed a dispute application with the former Trademark Review and Adjudication Board (TRAB) of State Administration for Industry and Commerce against the disputed trademark, requesting to revoke the disputed trademark on the ground that the disputed trademark, the cited trademark, and the trademark No. 3541267 "monalisa and device", constituted similar trademarks on similar goods. On November 25, 2013, the TRAB issued the Shang Ping Zi [2013] No. 116692 ＜Decision on Trademark Dispute Against Reg. No. 4356344 "M MONALISA and Device"＞ (hereinafter referred to as the Sued Decision), which held that the goods including "cooking apparatuses, pressure cookers (autoclaves, electric, for cooking), bathroom (water closets), toilet bowls" approved for use by the disputed trademark and the goods approved for use by the cited trademark constitute similar goods. The disputed trademark and the cited trademark constitute similar trademarks used on the similar goods, which does not comply with the provision of Article 28 of the Trademark Law of the People's Republic of China revised in 2001 (hereinafter referred to as the Trademark Law). It was ruled that the disputed trademark should be revoked on goods including "cooking apparatuses, pressure cookers (autoclaves, electric, for cooking), bathroom (water closets), toilet bowls", and upheld on the remaining goods.

The new materials company was dissatisfied and instituted an administrative litigation. In the litigation, the new materials company explicitly requested that the registration on the two goods of "bathroom (water closets), toilet bowls" shall be upheld, and no longer request to uphold the registration on the other unapproved goods.

Beijing No.1 Intermediate People's Court held in the first instance that the trademark No. 1476867 is the basic trademark of new material Company, which is identical to the disputed trademark in terms of graphics and the pronunciation in English. The goods "ceramic tile" approved for use by the trademark No. 1476867 shall belong to the similar goods to the goods "bathroom (water closets), toilet bowls" approved for use by the disputed trademark. The trademark No. 1476867 was once recognized as a well-known trademark on the goods of "ceramic tile", and its commercial reputation can be extended in the disputed trademark. The disputed trademark and the cited trademark can be clearly distinguished in terms of their overall visual effect and do not constitute similar trademarks. It was decided that the Sued Decision shall be revoked and the TRAB shall make a new decision.

The TRAB, building materials company and bath ware company were dissatisfied, and appealed to the Beijing Higher People's Court. During the second instance, the name of the new materials company was changed to Monalisa Group. On June 8, 2016, the Beijing Higher People's Court made the following judgments in the second instance: the goods "bathroom (water closets), toilet bowls" approved for use by the disputed trademark and the goods including "steam bath apparatus, Sauna bath installations, bath fittings" and the like approved for use by the cited trademark do not constitute similar goods; the disputed trademark is significantly distinguished from the cited trademark in terms of the constituent elements and overall appearance of the marks, and the two do not constitute similar trademarks; the commercial reputation of the trademark No. 1476867 on "ceramic tile" goods can be extended in the disputed trademark, and the relevant public can distinguish the disputed trademark from the cited trademark on relevant goods and will not confuse or misidentify the source of goods. It was ordered to reject the appeal and uphold the original judgment. The building materials company and the bath ware company applied for retrial and the retrial request was rejected.

Trademarks involved in this case are as follows:

The performance process of procuratorial organ

The building materials company and the bath ware company were dissatisfied with the second instance judgment and applied for supervision to the People's Procuratorate of Beijing Municipality, which examined the case and submitted it to the Supreme People's Procuratorate for counter-appeal. On November 11, 2021, the Supreme People's Procuratorate lodged a counter-appeal to the Supreme People's Court, arguing that the determination of facts and application of laws in the second instance judgment of this case were both incorrect. The Supreme People's Court ordered the Beijing Higher People's Court to make a retrial. On June 14, 2022, the Beijing Higher People's Court ruled that the disputed trademark and the cited trademark constitute similar trademarks used on similar goods. The evidences submitted by the Monalisa Group are not sufficient to prove that the trademark No. 1476867 already had a high reputation when the application for registration of the disputed trademark of this case was filed. Moreover, the trademark No. 1476867 was registered on the goods in Class 19, which belongs to a different class of goods from the Class 11 of goods for which the disputed trademark and the cited trademark are approved for use, and the commercial reputation of different goods certainly cannot be extended to the other classes of goods. The evidences submitted by the Monalisa Group are also insufficient to prove that, based on the popularity of its trademark No. 1476867 on the goods of "ceramic tile", the disputed trademark can be objectively distinguished from the cited trademark on the goods of "bathroom (water closets), toilet bowls". Therefore, the registration of the disputed trademark on the goods of "(water closets), toilet bowls" does not comply with the provisions of Article 28 of the Trademark Law. The Beijing Higher People's Court revoked the second instance judgment and the first instance judgment of this case in the retrial, and rejected the litigation claims of Monalisa Group.

The case is the first administrative litigation supervision case in which the Intellectual Property Prosecution Office of the Supreme People's Procuratorate has filed a counter-appeal and successfully changed the judgment since its establishment.

Guiding significance

(I) The determination of similar goods and similar trademarks should be based on the core function of the trademark in distinguishing the source of goods or services, with emphasis on the examination and judgment as to whether it is likely to cause confusion or misidentification among the relevant public.

(II) The trademark registrant is entitled to the independent exclusive right to the different trademarks registered thereby, and the trademarks registered successively do not have the continuity relationship, and the application conditions for the continuity of the trademark registration should be strictly handled in juridical practice.

(III) In handling intellectual property cases, the procuratorial organ should generally conduct a search for similar cases. The search for similar cases is a search for legal instruments in force that are similar to the basic facts, points of contention and application of the law of the pending case, and the case should be handled with reference to the searched instruments of similar cases.

(Source of case: the Supreme People's Procuratorate)