By King & Wood’sTrademark Practice

A Chinese company has applied for registration of the mark “吉百利”(Cadbury in Chinese) on fertilizers. Cadbury brought a lawsuit after it failed in both opposition and review proceedings.

In the court hearing, Cadbury claims that its prior mark “吉百利”(Cadbury in Chinese) has acquired fame and reputation and should be protected as a well-known mark against the opposed mark on dissimilar goods. The Trademark Review and Adjudication Board (TRAB) defends that although they understand that "Cadbury" is a well-known mark, yet they believe the registration on fertilizers would not cause confusion among consumers and thus injure the legitimate interest of Cadbury. Furthermore, the third party, (also the applicant of the disputed mark) argues that the distributing channels, target consumers, and markets for candies and fertilizers are so different that the disputed mark will not mislead the public.

The lawsuit focuses on the protection scope of a well-known mark, the key of which would be whether or not the court would consider the doctrine of dilution against a well-known mark, which is also a highly controversial issue in the trademark world. We will continue to follow up the case.