Recently, the Procter & Gamble Company filed a lawsuit against Guangdong Xuerou Fine Chemical Industry Co., Ltd. (Xuerou Company) for the registration of the trademark "伊卡璐", requiring the court to withdraw Xuerou Company's trademark "伊卡璐". Failed in the first-instance, dissatisfied Procter & Gamble Company made an appeal to the Beijing Higher People's Court.

P&G's claim for a well-known trademark

The　No. 1176333 trademark in question "伊卡璐" was applied for registration in 1997 by Jia Liya Cosmetics Co., Ltd. in Chaoyang City, Guangdong Province and was approved in 1998, certified to be used on Class 5, the goods of air fresheners. In 1999, the trademark in question was transferred to the Xuerou Company, and in 2005, Xuerou Company became the owner of the trademark in question lawfully, with the trademark renewal extended to 2018.

Meanwhile, the No. 886050 cited trademark "伊卡璐" was applied for registration by Guangdong Apollo Cosmetics Co., Ltd in 1994 and approved in 1996, certified to be used on Class 3, the goods of detergent, ect. In 2003, the cited trademark was transferred to the Procter & Gamble Company.

The case started from 2009, in which the Procter & Gamble Company made a trademark dispute application to the Trademark Appeal Board under the State Administration for Industry and Commerce, argued that "伊卡璐", was a distinct Chinese trademark it created based on the English trademark "CLAIROL", and Xuerou Company's registration of the trademark in the similar goods had constituted trademark infringement.

According to the Procter & Gamble Company, it had begun  to sell products of skin care with the trademark "伊卡璐" in China in 1996, with the package of the products marked with both "Clairol" in English and "伊卡璐" in Chinese. After years of application and advertising, "伊卡璐" had been a well-known brand in hair care as well as a well-known trademark. Hence, Xuerou Company constituted malicious copy and plagiarism due to the identical character design of the trademark "伊卡璐".

Insufficient evidence

In the trial, the Beijing Higher People's Court found that though Procter & Gamble Company could prove that it had used the trademark "伊卡璐" from 1996 to 1998, the trademark was transferred to it in 2003. As Procter & Gamble Company did not obtain the trademark or get authorized to use the trademark before 2003, its use of the trademark from 1996 to 1998 was invalid. Based on that, the court held that the Procter & Gamble Company failed to prove "伊卡璐" had constituted a well-known trademark before 2003.

As to the trial, the agent of the Procter & Gamble Company argued that the company's use of the trademark before 2003 should be retroactive though the trademark "伊卡璐" was transferred to it by Guangdong Apollo Cosmetics Co., Ltd. in 2003. However, the opinion did not gain the court's support. Now the case is in trial, and we will continue to follow it.

(China IP News)