"Kiehl's", a cosmetics brand of French L'Oreal Group, was translated as "契尔氏" when entering the Chinese market. However, the Chinese characters "契尔氏" have already been registered as a trademark by a natural person before "Kiehl's" entered, certified to be used on Class 3, cosmetics, ect. Recently, the right-holder of "契尔氏" filed a lawsuit against a company which sells cosmetics on Tmall over the use of "契尔氏". Meanwhile, "KIEHL'S", the trademark of "Kiehl's", also meets disputes.

Disputes over "契尔氏"

Recently, the Beijing Fengtai District People's Court heard a trademark case involving "契尔氏" and its figure. The focus of the case is whether the Chinese characters "契尔氏" are a registered trademark or the translation version of "Kiehl's".
   
The plaintiff Li Yuwu, the general manager of Guangzhou Wangsha Fine Chemical Company (Wangsha company), is the right-holder of the trademark "契尔氏" as well as its figure. According to Li Yuwu, Beijing Fa Lisha Trading Co., Ltd. (Fa Lisha company) used the trademark "契尔氏" and its figure on Tmall, and claimed "契尔氏" as its own brand, which misled consumers. As a peer competitor, Fa Lisha company's behavior had infringed its trademark right, and constituted unfair competition. Zhejiang Tmall, as the mall operator, which facilitated the infringement, also constituted infringement.

Fa Lisha company argued that both "契尔氏" and "科颜氏" were translation versions of "Kiehl's", which can be seen on Kiehl's' official website. The brand of products it sold on Tmall was "Kiehl's". Hence, it did not infringe Wangsha company's trademark right, let alone unfair competition.
　　
Up to now, the case is on trial.

"契尔氏" is not "Kiehl's"

Back in 2010, Zhe jiang Ningbo Zhengping Trading Company (Zhengping company) launched a cooperation with Wangsha company, and began to sell cosmetics with the brand of "契尔氏QIERSHI". However, its behavior was questioned by consumers. Yu Yaolu, the general manger of Zhengping company, said they had examined related documents of Wangsha company before the cooperation, and found Wangsha company had got the authorization of the U.S. Kiehl (International) Holdings Ltd (the U.S. Kiehl). What's more, their cooperation was carried out in accordance with the law. However, the registered name of the U.S. Kiehl was not "Kiehl's" but "QIERSHI".

Zheng Haojie, the vice manager of Wangsha company, said the U.S. Kiehl was a company that Wangsha registered in Hong Kong, which had no relationship with "Kiehl's". Moreover, "契尔氏" was Wangsha's own brand as well as its legal trademark.

Disputes over "KIEHL'S"

Recently, Beijing No. 1 Intermediate People's Court rendered its decision on the dispute over "KIEHL'S". According to the decision, "KIEHL'S" may be registered on goods of glasses, ect.

The No. 1500253 trademark "KIEHL'S" was applied for registration in 1999, and approved in 2001, certified to be used on Class 3, cosmetics, ect. In 2002, it was transferred to the L'Oreal Group, with its renewal to January 2021.

The No. 5543574 trademark that the L'Oreal Group filed objection to was applied for registration in 2006, certified to be used on Class 9, by a natural person named Li Laibing who lived in Linhai City, Zhejiang Province. During the publication, L'Oreal Group had raised objections. Rejected, it filed an application for review, alleging that its trademark "KIEHL'S" had constituted a well-known trademark in cosmetics and Li's application constituted malicious copy as well as imitation.

When rejected again, L'Oreal Group made an appeal to court.

The court held that the two trademarks differ greatly in function, purpose, and marketing channel, which are not easily confused by the public. Hence, no similarity is constituted. The court also held the evidence L'Oreal Group provided was insufficient to prove its trademark had been a well-known trademark before Li's application. So ordered.

(China IP News)