You probably think this is a pretty easy case. This “Haager-Dasz” trademark was obviously filed in bad faith, and this local company should not be allowed to use it. This is yet another one of those trademark squatting situations, right?
Yes, but that doesn’t mean that the case is, as we say back home, “open and shut.” Let’s look at the facts and run through the procedure:
A court in Beijing has confiscated the “Haager-Dasz” trademark from a clothing manufacturer, saying the public would confuse the name with the well-known Haagen-Dazs ice cream.
Beijing No 1 Intermediate People’s Court on Dec 3 made a ruling in favor of General Mills Co, the American food corporation, which sought to remove the trademark from clothing.
First off, note that contrary to the China Daily article, the court did not, in fact, “confiscate” the trademark. Courts can’t do that, and anyway, “confiscate” is not exactly a legal term of art. See below for what actually happened. Moving on:
On June 3, 2003, a manufacturer applied to register “Haager-Dasz” as a trademark for clothing items. General Mills, the owner of the Haagen-Dazs brand, raised objections with the trade appeal board of the State Administration for Industry and Commerce.
The procedure here is that the clothing company filed the application, which was reviewed by the Trademark Office and slated for registration. While the mark was in the publication period, a three-month period of time prior to registration during which third parties can raise objections, General Mills filed what is called an opposition. This filing goes to the Trademark Review and Adjudication Board (TRAB) for review, and the administrative ruling can take several years.
The board found that the materials provided by General Mills failed to prove that it has been “well-known in China’s relevant public with high reputation” and therefore granted the Haager-Dasz registration.
Why was General Mills making a well-known mark argument? Because the “Haager-Dasz” mark application and the existing “Häagen-Dazs” registration specify different goods for protection. Specifically, clothing is in Class 25, while ice cream is in Class 30. (I’m assuming that the squatter was attempting to file in Class 25 and that General Mills at least had an existing Class 30 registration prior to 2003, if not other registrations.) Even identical marks can coexist on disparate goods like this, and since the clothing company was first to file this application, it would ordinarily be entitled to this registration.
Well-known mark protection is an exception to the general rule. In this case, if General Mills could prove that the “Häagen-Dazs” mark is sufficiently well known, than this status could be used to block the “Haager-Dasz” application in Class 25.
So TRAB ruled for the clothing company, finding that General Mills’ well-known brand argument was unconvincing. Does this sound familiar? Yes, it’s the same problem that other global brands have run into here in the past. If you recall my earlier posts on the subject, the problem isn’t that the marks are dissimilar or even that the foreign brand isn’t famous, but rather that the foreign company had insufficient evidence to prove its well-known status.
After TRAB ruled against General Mills, the administrative decision was appealed to Beijing’s First Intermediate Court, which has exclusive jurisdiction over these appellate cases. The court ruled the other way, striking down the TRAB decision.
One technical issue here that I’m not sure about. After TRAB ruled for the clothing company, it’s possible that the application went forward and the mark was duly registered. Then again, because the TRAB appeal was pending, maybe the registration remained in a holding pattern. I honestly can’t remember what happens in that situation. Perhaps a PRC trademark agent or lawyer out there will chime in with the answer.
My only other question here is why the court disagreed with TRAB on the well-known mark issue. Was TRAB viewing the evidence incorrectly? Was this just a subjective difference of opinion? Since many other foreign brand owners have lost these cases, it would be useful to read the actual ruling and see what made the difference in this case.