: Cross-class protection, a concept in trademark law, refers to the cross-class protection implemented by the state for registered well-known trademarks, also called "absolute protection". Below, the editor will introduce to you in detail the relevant knowledge of cross-class protection of trademarks. What conditions need to be met for cross-class protection of trademarks?
Basic case facts
Shanghai XX Network Co., Ltd. owns a number of registered trademarks such as XX?, ?O.C.Tmami?, ?OCTmami? and so on. Exclusive rights. The company's core trademark is the XX trademark No. 1330964, which was approved for registration on November 7, 1999 and approved for use on Class 25 clothing products.
In 2012, a batch of health products with the words "XX (China) Co., Ltd." and "XX" appeared on the market, including XX calcium lactate granules, XXDHA algae oil gummies, and XX folic acid. Vitamins etc.
XX Company filed a request for invalidation of the ?XXOC...Y? trademark held by NZL (Xiamen) Biotechnology Co., Ltd., the licensor of the above product trademarks.
The Trademark Review and Adjudication Board determined that the trademark in dispute and the cited trademark constituted similar trademarks used on similar goods as specified in Article 28 of the Trademark Law before the amendment, and declared the trademark in dispute invalid. .
Gist of the trial
The focus of this case is whether the goods designated for trademark No. 1330964 and trademark No. 8585534 constitute similar goods.
After trial, the Beijing Intellectual Property Court held that by comparing the medical nutritional food, baby food, medical nutritional products, infant milk powder and other products designated for use in the disputed trademark with the clothing approved for use in the cited trademark, the second There are obvious differences in functions, uses, sales channels, and consumer groups, and they should not be regarded as similar goods. The ruling against the defendant found that the trademark in dispute violated Article 28 of the Trademark Law before the amendment and was an error in the application of law, so it was revoked. In addition, the Trademark Review and Adjudication Board shall continue to examine whether the trademark in dispute violates Article 13 of the Trademark Law before the amendment.
Expert Comment
Lawyer Huang Xuefen from Guangdong Changhao Law Firm believes: According to Article 13, Paragraph 2 of the Trademark Law:? Apply for different or dissimilar goods If a registered trademark is a copy, imitation or translation of someone else's well-known trademark that has been registered in China, misleading the public and causing possible damage to the interests of the registrant of the well-known trademark, it will not be registered and its use will be prohibited. ?When hearing such a case, the court must not only consider whether the two trademarks are identical or similar, but also need to consider factors such as whether the goods used by the trademark belong to different categories and whether the trademark requested for protection is well-known. Cross-class trademark protection can only be established when all conditions are met.
Article 6, paragraph 2, of the Paris Convention for the Protection of Industrial Property stipulates: If the competent authority of the country where a trademark is registered or used considers that a trademark has become a well-known trademark in that country, it has become a trademark that is entitled to the rights of this Convention. When another trademark constitutes a copy, imitation or translation of the well-known trademark and is used on the same or similar goods, which is likely to cause confusion, the countries in this Union shall ex officio, if permitted by their own laws, or the relevant parties. request, refuse or cancel the registration of the other trademark and prohibit its use. It can be seen from the above provisions that the Paris Convention does not provide preferential cross-class protection for well-known trademarks, but only prohibits registered trademarks on identical or similar goods.
After joining the WTO, our country is both a member of the Paris Convention and a signatory of the Agreement on Trade-Related Aspects of Intellectual Property Rights. The above provisions certainly apply to our country. To this end, in the newly revised Trademark Law, my country specifically stipulates the issue of cross-class protection of well-known trademarks. Article 13 of the new Trademark Law stipulates: A trademark applied for registration on the same or similar goods is a copy, imitation or translation of others. Well-known trademarks that have not been registered in China and are likely to cause confusion will not be registered and are prohibited from use.
If a trademark applied for registration for different or dissimilar goods is a copy, imitation or translation of a well-known trademark already registered in China by others, misleading the public and causing possible damage to the interests of the registrant of the well-known trademark, registration will not be granted and use will be prohibited. ?
Related reading:
For cross-class protection of trademarks, see the provisions of Article 13, Paragraph 2 of the Trademark Law: Application for registration of trademarks for different or dissimilar goods If it is a copy, imitation or translation of someone else's well-known trademark that has been registered in China, misleading the public, and causing possible damage to the interests of the registrant of the well-known trademark, it will not be registered and its use will be prohibited.
Well-known trademarks can receive special protection including "cross-class protection", while non-well-known trademarks can also receive corresponding protection after reaching a certain level of popularity. However, since different law enforcement officials have inconsistent understandings of the influence and popularity of relevant trademarks, cross-class protection of non-well-known trademarks is highly contingency. Therefore, after the trademark has been cultivated to a certain stage, you should actively apply for well-known trademark recognition as soon as possible. If an infringement has occurred, you can also request the People's Court to make a legal judgment during the litigation process. Only after being recognized as a well-known trademark can the relevant trademark receive stable special protection. Conditions for company registration