On February 17th, 2023, the iconic toy manufacture MATTEL, INC. (herein as Mattel), creator of the famous doll Barbie, won a trademark infringement against a Chinese company named Yunchong (Beijing) Animal Medical Technology Co., Ltd. (hereinafter as Yunchong).
Everybody knows what Mattel and Barbie are around the world and their high popular status in the toys scenario.
On the other side, Yunchong (Beijing) Animal Medical Technology Co., Ltd. is a renowned Chinese animal hospital chain, founded in 2015, focusing on the field of pet medicine in China. With the help of doctors and operation teams with professional experience in China’s pet medicine, it has built a brand and operation system of pet chain hospitals trusted by consumers in China through self-built hospitals and holding acquisitions of existing pet hospitals.
The company currently operates more than 90 animal hospitals around China.
The dispute started on October 28, 2015, when Yunchong applied for the registration of the trademark “Barbitan” (referred to as the contentious trademark) with the number of 18179646A, in class 44 for animal breeding, artificial insemination (for animals), in vitro fertilization (for animals), pet cleaning, and veterinary assistance.
As soon as the cited trademark has been published, Mattel filed an opposition action against it due the high similarity with the trademark No. 4532735 “BARBIE” in class 44.
Mattel’s “Barbie” and “??” trademarks were included in the National Key Trademark Protection List as early as 1999 and 2000 and were recognized as a well-known trademark in 2004.
On January 22, 2020, the CNIPA made the decision that the trademark No. 18179646A “Barbitan” constitute similar trademarks used in the same or similar services, and Yunchong trademark should not be registered.
Yunchong was not satisfied and filed the appeal at the Beijing Intellectual Property Court.
The Beijing Intellectual Property Court held that Article 30 of the Trademark Law, as amended in 2013, stipulates: “Where the trademark applied for registration does not conform to the relevant provisions of this Law or is identical or similar to the trademark already registered or preliminarily approved by others on the same or similar goods, the Trademark Office shall reject the application and shall not publish it.”
The application of Article 30 of the Trademark Law considers the similarity of trademark marks, the similarity of goods, the significance and popularity of the quoted trademark, the attention of the relevant public and the subjective intention of the applicant for the trademark in dispute, as well as the interaction between the above factors, so as to determine whether it is easy to cause confusion among the relevant public.
In this case, based on the following factors, the court held that the application for registration of the trademark in dispute constituted the situation specified in Article 30 of the Trademark Law:
1. The services designated for use by the trademark in dispute and the services approved for use by the cited trademark are both animal breeding in Class 44.
2. The cited trademark is composed of the Chinese character “???”, and the first two characters is “??” corresponds to the cited trademark “Barbie”.
3. The evidence Mattel can prove that “Barbie” and “??” have been widely publicized and used for a long time before the application date of the disputed trademark and have a relatively high reputation.
4. Although the evidence submitted by Mattel is mainly focused on class 28 (toys) and not class 44, the two even if not completely connected, there is still some relevance that can lead to confusion and misleading by the consumers.
5. Although the plaintiff submitted numerous evidence of use, it was mostly reflected in the name of the enterprise “Barbie Tang Animal Hospital”, the scope of protection of the right to the name of the enterprise is different, the use of the name of the enterprise cannot be equated with the use of the trademark in dispute, and the plaintiff still has other trademarks containing the words “Barbie Tang”.
Eventually, Beijing IP Court ruled in Mattel’s favor against Yunchong declaring that the cited trademark should not be registered.
Currently, Yunchong has appealed.
