China Law Insight : China Law Insight: China Commercial and Intellectual Property Lawyers and Attorneys, Full Service Law Firm: King & Wood

 Mandarin Oriental Hotel Group operates a chain of luxury hotels in many major cities globally. In Hong Kong, they have three hotels, their flagship Mandarin Oriental, The Landmark Mandarin Oriental and The Excelsior.  The Mandarin Oriental group took exception to Rhombus including the letters “MO” as the name of the hotel and filed a lawsuit against various entities in the Rhombus group, including Hotel Mo Limited and Hotel Mo Management Limited to prevent the use of these letters.

Mandarin Oriental considers the use of “MO” as confusingly similar to its corporate brand. They claim that the public will mistakenly assume that the Hotel Mo is owned, operated or in some way associated with or endorsed by them. Mandarin Oriental went to court to seek an injunction to prevent Rhombus from opening a hotel or related business using or incorporating the letters “MO”.

Although Mandarin Oriental has a large portfolio of registered trademark in Hong Kong, it did not include registration of “MO” or a similar trademark, so it cannot claim that Rhombus infringed a registered mark. However, they had applied applications to register “MO” and “MO” with their well recognized hand fan logo with the Hong Kong Trade Mark Registry in September. Without a registered trademark, they turned to the common law theory of “passing off” to pursue their claim. This theory allows the holder of an unregistered trademark to stop others from using the same or a similar mark in the same or a related trade.

To succeed in a passing off claim, Mandarin Oriental has to establish three points.

First, it has to show that it has already established goodwill and reputation for its hotel and hotel services in the minds of the public and that the public recognizes its mark as distinctive and specially associated with its goods and services.

Second, Mandarin Oriental has to show that Rhombus has misrepresented to the public so that the public may reasonably believe that “Hotel MO” is operated or endorsed by Mandarin Oriental.

Finally, Mandarin Oriental has to show that it has suffered damages or lost business because of the erroneous belief of the pubic.

To succeed on a passing off claim, Mandarin Oriental must establish all three points.

On the first point, it may be foolish to deny that Mandarin Oriental enjoys an excellent reputation as the operator of some of the world's finest luxury hotels. Mandarin Oriental enjoys substantial goodwill in its brand in the mind of the Hong Kong public. However, for it to establish a passing off claim, it has to show more than the reputation and goodwill attached to “Mandarin Oriental” or its hand fan logo. It also has to show that it enjoys a reputation and goodwill to the letters “MO” in the mind of the public. There is no presumption that the goodwill attached to its brand automatically extends to “MO”.

Essentially, Mandarin Oriental must produce evidence that the Hong Kong public identifies “MO” as being associated with Mandarin Oriental’s hotel and related business. While there are MO Bars in some Mandarin Oriental hotels, including The Landmark Mandarin Oriental in Hong Kong, the group does not have a hotel either by the name of “MO” or one where “MO” is incorporated as a significant part of a hotel name within its group. What they have to show is that when the Hong Kong public sees “MO”, their reaction is something akin to “Mandarin Oriental”. Their challenge is to show that the presence of MO Bars in some Mandarin Oriental properties allows the Hong Kong public to make that connection.

The second part is to show misrepresentation. Misrepresentation does not necessarily mean an intentional attempt by Rhombus to mislead the public that its yet to be open Hotel MO is related to the Mandarin Oriental group. Instead, misrepresentation refers to a strong and widely recognized association between “MO” and Mandarin Oriental such that the Hong Kong public assumes that any use of “MO” is connected with the Mandarin Oriental group. So the mere use of “MO” by Rhombus will cause the Hong Kong public to erroneously believe that the hotel is a Mandarin Oriental operation even though Rhombus is not intentionally being deceitful or intentionally trying to leave this impression with the public.

Assuming that Mandarin Oriental can produce sufficient evidence to show the first two points, the third point is relatively easy to establish. Even if Mandarin Oriental cannot show that it has suffered actual damages caused by the Hotel MO, it is enough to show that its reputation will suffer if Hotel MO is allowed to operate.

Will Mandarin Oriental be able to show that Rhombus is passing off its Hotel MO as a part of its hotel group? We will know after the hearing on the preliminary injunction. Stay tuned.

I. “ Famous” Trademarks Recognized in Three Types of Civil Disputes:
A. Unauthorized use of a mark that is the same as or similar to a non-registered mark in China on same or similar goods/services;

B. Unauthorized use of a mark that is same as or similar to a registered mark in China on dissimilar goods/services; and

C. Unauthorized use of mark that is the same as or similar to a registered mark in China as a trade name on dissimilar goods/services.

The Supreme People's Court noted that it was not necessary to recognize the “famous” status of the trademark in a dispute concerning the registration and/or use of domain names which are the same as or similar to the registered trademark at issue.

II. The Interpretation further clarifies that the continued use of a mark before its registration in China can be considered when the courts evaluate how famous a mark is. The elements for evaluation of the level of fame of a mark, as stipulated in Article 14 of the Trademark Law, will be examined by the court under the totality of the circumstances and not all elements are required to be present for the mark to be deemed “famous". For a mark which enjoys a high degree of recognition nationwide, the burden of proof regarding the level of fame of the mark is further decreased and the Court is allowed to use its discretion when making its ruling based upon evidence offered by the Plaintiff.

III. The concept of “anti-dilution” was also introduced in the Interpretation. It is noted that the damage to the good will associated with a famous trademark should be recognized as a form of harm to the legitimate interests of the famous trademark owner.

IV. This new Interpretation will take effect on May 1st, 2009 and will be applicable to all cases pending Judgment. It is worth noting that just prior to the issuance of the Interpretation, the Supreme People's Court limited the courts which have authority to recognize a trademark as “famous” to the Intermediate People's Courts in the capital cities of the Provinces, in municipalities listed in the state organizational plan, in municipalities directly under the central government and also Intermediate People's Courts approved by the Supreme People's Court.

With now two consecutive opinions rendered by the Supreme People's Court on the recognition of “famous” trademarks, a clear signal is being sent to the public that the Supreme People's Court understands the importance of the establishment of a uniform standard for judicial recognition of “famous” trademarks in China.

最高人民法院明确了驰名商标司法认定的标准

最高人民法院于2009年4月23日发布了《关于审理涉及驰名商标保护的民事纠纷案件应用法律若干问题的解释》，明确了在中国通过司法途径认定驰名商标的标准。

1． 法院在三类案件中可以认定驰名商标，即：

1.1 未经许可在相同或者类似商品上使用与他人未注册的驰名商标相同或者近似商标的；
1.2 未经许可在非类似商品上使用与他人注册商标相同或者相近似的商标的；以及
1.3 未经许可在非类似商品上使用与他人注册商标相同或者相近似的企业名称的。

最高人民法院指出，将他人注册商标相同或者相近似的标识注册为域名并使用的行为，在认定侵权时，无需认定该商标驰名。

2． 该解释明确，在认定驰名时，该商标核准注册之前持续使用的情形也应考虑在内。《商标法》第14条所规定的认定驰名的各项因素，应综合考虑，无须考虑该条规定的全部情形。对于在中国境内广为知晓的商标，认定驰名时原告的举证责任可以进一步减轻，法院可以根据原告提交的基本证据运用自由裁量权对于涉案商标的驰名地位予以确认。

3． 该解释还引入了反淡化的观念，减弱、贬损驰名商标的市场声誉的，也属于对驰名商标合法权益的一种侵害形式。

该解释于2009年5月1日正式施行，并适用于该日期后的所有未决案件。值得注意的是，在该解释出台之前，最高人民法院发布通知，将有权审理涉及驰名商标认定案件的法院限制为：省级政府所在地中级人民法院，计划单列市中级人民法院，直辖市中级人民法院以及经最高人民法院批准的中级人民法院。

最高人民法院借助这两个司法解释，向公众表明了最高人民法院意图使驰名商标的司法认定标准规范化和统一化。