Authored by Yang Mingming

In a decision that underscores China’s evolving jurisprudence on well-known trademarks, the Beijing High Court ordered the invalidation of a copycat mark piggybacking on the globally renowned “MICHELIN” brand, despite being registered in a non-competing class. The ruling, selected to be included in the Top 10 Judicial Cases on Trademark Granting and Affirmation in 2024 by the Beijing courts, is a living example of the Chinese judiciary endeavor in protecting trademark reputation against dilution and unfair association in China.

Background

At issue was the validity of trademark No. 19240349  (美奇林科技MECHELEN M & device), registered by Guangdong MECHELEN Interactive Technology Co., Ltd. in Class 28 on February 21, 2018, covering goods such as playing cards, toy vehicles, and intelligent toys, among others.

Michelin Group, citing its prior “MICHELIN” and “米其林” (Chinese equivalent of MICHELIN) trademarks, sought to invalidate the registration on the grounds that it imitated its well-known marks in tire and improperly exploited their reputation, thus is in violation of Article 13(3) of the 2013 PRC Trademark Law.

On February 7, 2021, the China National Intellectual Property Administration (CNIPA) issued a partially favorable decision. CNIPA found that the contested mark “MECHELEN” and the cited mark “MICHELIN” are similar in terms of letter composition, pronunciation, and visual impression, so the coexistence of the two marks on similar goods such as “building blocks (toys),” “toy vehicles,” and “intelligent toys” was likely to cause confusion among relevant consumers regarding the source of the goods. However, for other designated goods such as “playing cards”, CNIPA concluded that these items are dissimilar to the goods covered by Michelin’s cited mark and, more importantly, differ significantly in function, sales channels, and target consumers from Michelin’s well-known tires. Therefore, the registration of the contested mark on those goods was not likely to mislead the public or harm Michelin’s interests.

Michelin’s appeal to the Beijing IP Court was also dismissed on April 16, 2023, prompting a further appeal to the Beijing High Court.

High Court Decision

Reversing both lower decisions, the Beijing High Court ruled on February 8, 2024, that the protection scope for a well-known trademark should be proportionate to its degree of fame and distinctiveness. The more prominent the mark, the broader the category of goods or services to which it deserves protection.

The court affirmed that the “MICHELIN” trademarks had achieved a high level of public recognition in China and should be protected as well-known trademarks. While the goods at issue, such as playing cards, were not functionally similar to tires, their presence under a visually and phonetically similar mark could mislead consumers into assuming an association with the Michelin brand. This would result in an unfair dilution of the brand’s distinctiveness or an illegitimate exploitation of its reputation.

Accordingly, the court ordered the CNIPA to remake the invalidation decision, citing the need for stronger cross-class protection based on the mark’s extensive goodwill and recognition.

Key Takeaways

This ruling marks a further embracing of the dilution theory by China’s judiciary in enforcing cross-class protection of well-known trademarks in China.

• The case affirms that well-known trademarks with strong distinctiveness and widespread recognition merit an expansive protective scope, even into unrelated product categories.

• The court demonstrated a nuanced understanding of the commercial dynamics that drive free-riding and association risks, particularly in consumer goods with low barriers to entry.

• The decision aligns with China’s stated objective of providing consistent, non-discriminatory IP protection, and may provide reassurance to foreign rightsholders.

Brand owners seeking protection in China should proactively monitor filings in similar and dissimilar classes and be prepared to invoke well-known status where appropriate. The case also reinforces the importance of maintaining robust evidence of reputation, including sales data, marketing efforts, consumer surveys, and prior enforcement records.

This decision offers a valuable reference for building compelling Article 13(3) arguments, especially in cases involving semantic imitation, transliteration, or device marks with suggestive elements.