General Electric Company, as represented by King & Wood Mallesons, has recently won an important trademark litigation before the Supreme People’s Court in China after over ten years of process, resulting in its GE logo successfully recognized as well-known trademark in China.
1. Case brief
On December 8, 2008, Shanghai Dongjin Textile Dyeing & Finishing Co., Ltd. (hereinafter referred to as “Shanghai Dongjin Company”) filed an application for registration of the trademark “” No. 7099996 (hereinafter referred to as “the Opposed Mark”) with the China Trademark Office. The Trademark Office preliminarily approved the registration of the Opposed Mark on the goods “door curtains” in Class 24 after examination. General Electric Company (hereinafter referred to as “GE”) then filed an opposition, claiming that the registration of the Opposed Mark was a copy of its registered well-known mark “” No. 138422 (hereinafter referred to as the “Cited Mark”) on goods such as “electrical lighting equipment” in Class 11, which damaged the rights and interests of GE. The Trademark Review and Adjudication Board (hereinafter referred to as the “TRAB”), the first instance court and the second instance court all found the evidence submitted by GE was insufficient to prove the well-known status of the Cited Mark, the goods covered by the Cited Mark was merely remotely related to the “door curtain” goods designated by the Opposed Mark, and thus the registration of the Opposed Mark would not cause confusion among the relevant public or damage the interests of GE. GE was not satisfied with the second instance judgment and filed a retrial petition with the Supreme People’s Court. After reviewing the files and holding an oral trial, the Supreme People’s Court decided to hear the case and then issued the (2020) Zui Gao Fa Xing Zai No. 205 Judgment at the end of 2020, which found: (1) GE’s mark “” No. 138422 had become well-known before the application of the Opposed Mark on December 8, 2008; (2) the Opposed Mark was a copy of GE’s well-known mark; (3) the goods lighting devices, etc. in Class 11 covered by the Cited Mark were closely related to the goods “door curtains” in Class 24 designated by the Opposed Mark; and (4) the registration of the Opposed Mark was likely to mislead the public and damage GE’s interests. The Supreme People’s Court therefore overturned the TRAB’s decision as well as the first & second instance judgments, and rejected the registration of the Opposed Mark. Finally, the dispute over the Opposed Mark, which already lasted for more than ten years, was conclusively settled to GE’s favor.
2. Experience and significance
The whole procedure of the case (i.e. from the filing of the opposition application to the issuance of the Supreme People’s Court’s final judgment) lasted for over 10 years, which was a huge challenge for both the client and King & Wood Mallesons. Fortunately, the client’s persistence paid off. Not only was the malicious registration of the Opposed Mark rejected, but the client’s own mark was also recognized as well-known by the Supreme People’s Court, which as a result provides an important factual basis and foundation for the client’s future trademark protection in China.
The recognition of the well-known mark has always been a difficult and challenging issue for brand owners, and there have been few cases where the Supreme People’s Court overturns the first and second instance judgments to recognize a well-known mark in the retrial procedure. The reasons why this case could ultimately be successful may be summarized as follows:
- The legal work of the case was solidly prepared. After taking over the case in the first instance procedure, King & Wood Mallesons (“KWM”) provided the client with detailed advice on evidence collection from various aspects, including the fame of the Cited Mark, relevancy of goods and the bad faith of the adverse party. The client also cooperated actively and completed collection of almost all the evidence in the first instance procedure. Besides, KWM creatively adopted a roundabout approach by obtaining well-known mark recognition based on essentially the same evidence in other relatively easy cases first, and then submitting those favorable judgments in this case to support our claims.
- The litigation strategy was well formulated. Apart from the aspects of “reasoning” and “law”, KWM also argued from an emotional perspective in order to impress the judge in his discretion. As is known to all, Thomas Edison, the founder of GE, was the inventor of the light bulb. It would be quite absurd if the trademark of an inventor who has made such a great contribution to the mankind could not be recognized as well-known on the goods he invented.
- The client was persistent in their efforts and trust. As the party standing in favor of justice, the client believed that they would win the case sooner or later. For such a time-consuming, complicated and costly lawsuit, it would be difficult to achieve the final success without the client’s persistence and trust to us.
- The judicial environment in China is getting better and better. Currently, the innovation and protection of intellectual property rights is vigorously encouraged and adequately supported by the authorities from both the legislative and judicial aspects. The substantive rules are being improved, and the procedures are becoming increasingly transparent. We have full confidence in the judicial environment in China, and believe that justice will be served for people seeking it, at an increasingly rapid pace.