Beijing High Court backs Michelin in invalidating copycat mark

During routine trademark monitoring, Michelin learned that the trademark application ‘美其淋’ (MEI QI LIN in Chinese characters) No 12963409 had been filed by the Chinese company Bozhou Sihai Pharmaceutical Co Ltd on 23 July 2013 in Class 32.

The mark shares similar pronunciation and appearance to Michelin’s well-known trademark ‘米其林’ (WKTM). Michelin therefore filed an opposition against the applied-for trademark on 19 January 2015, arguing that it is confusingly similar to own cited mark. On 29 February 2016, the opposition was dismissed by the China Trademark Office, based on its finding that the different characters of the two marks and the remote relationship between the designated goods (drinks and tyres) are unlikely to cause confusion. The opposed trademark later proceeded to registration. Michelin subsequently brought an invalidation action on 26 April 2017, but to no avail. The invalidation application was overruled by the then Trademark Review and Adjudication Board (TRAB, which was later incorporated into the China National Intellectual Property Administration (CNIPA)) on 21 December 2017.

Michelin appealed the CNIPA invalidation decision before the Beijing IP Court, which upheld the CNIPA’s ruling on 8 July 2019 on the grounds that the contested mark is markedly different from Michelin’s trademark and its Chinese equivalent, and the designated goods (beer and juices) are not related to tyres in terms of their function and usage, so the registration and use of the contested mark would not cause confusion or dilution.

Michelin then appealed before the Beijing High Court, which reversed the decision of the Trial Court on 28 December 2020. Taking into account the high reputation of Michelin’s marks in China, the Court of Appeal found that the contested mark is similar to the cited marks in terms of pronunciation, and thus should be viewed as the transliteration of Michelin’s well-known trademark. In view of the reputation and influence of the Michelin Guide, the Court of Appeal concluded that the registration and use of the contested mark on juices and beer is likely to be associated with Michelin’s marks.

On 22 February 2021, the CNIPA reversed its decision and declared the contested mark invalid.

In practice, CNIPA examiners often place more weight on the initial letters/characters, rather than the sounds of the marks, when ascertaining trademark similarity. The CNIPA and the trial court apparently followed this methodology, in finding that the contested mark and the cited marks are distinguishable. However, the Court of Appeal then weighed in on the well-known status of Michelin’s marks and the similar pronunciation of both marks, and ruled that the contested mark should be regarded as an imitation of Michelin’s mark.

What is intriguing about this case is the court’s assessment of Michelin’s influence in the field of catering. In assessing the likelihood of confusion and trademark dilution, the Court of Appeal also took into account Michelin’s clout in the catering business, which derives from the most prestigious restaurant guide in the world, the Michelin Guide, before concluding that the registration and use of the contested mark in Class 32 would cause confusion and dilution.