ESSILOR INTERNATIONAL (COMPAGNIE GENERALE D'OPTIQUE) (ESSILOR) obtained the registration in 1986 of the trademark "ESSILOR" in China (Figure 1) designating "various spectacles and frames for protecting or correcting vision" in Class 9. In 1999, ESSILOR registered the trademark "依视路" (Chinese transliteration of ESSILOR) (Figure 2) designating "spectacle lens (non-implantable)" in Class 9.

On 4 June 2010, Shanghai Hongcheng Optical Co., Ltd. filed an application for the registration of the trademark "eSSILOR依视路" (Figure 3) designating "industrial adhesives and curing agents", in Class 1.

On 23 June 2011, ESSILOR filed an opposition with the China Trademark Office (CTMO) against the Opposed Mark, citing its prior registrations. The CTMO dismissed the opposition on November 6, 2012, considering that 1) the designated goods of the Opposed Mark are not similar with those of the Cited Marks, and 2) the evidence is insufficient to prove that the Opposed Mark "duplicated or copied (its) well-known trademark" according to Article 13.2 of the 2001 Trademark Law.

On 30 November 2012, ESSILOR filed for review with the Trademark Review and Adjudication Board (TRAB), citing Article 13.2 (registered well-known trademark) and Article 31 (prior right and prior used trademark of certain influence) of the 2001 Trademark Law, among others.

The TRAB held that:

l  Article 13.2 does not apply : even though ESSILOR's Cited Mark 2 "依视路" has built a certain reputation on "spectacles", however, the evidence is insufficient to prove that such mark had reached, through use and promotion in mainland China, the well-known status which would justify a cross-category protection.

l  Article 31 (no prejudice to other prior rights or to an prior used trademark with a certain influence) does not apply either: despite the fact that prior to the application of the Opposed Mark, ESSILOR had been using "依视路" and "ESSILOR" as its trade name, there is a big gap between the goods of the Opposed Mark and those of the Cited Marks. And ESSILOR failed to prove that it had used its trademark in respect of the goods designated by the Opposed Mark and had attained a certain influence.

The TRAB approved the registration of the Opposed Mark on 14 April 2014.

ESSILOR appealed to the Beijing First Intermediate Court, claiming that the TRAB had failed to adjudicate on the issue whether the Cited Mark 1 "ESSILOR" had reached the well-known status.

The Court ascertained that the TRAB had failed to adjudicate all the claims of ESSILOR, which breached the provisions of Article 28 of the "Trademark Review and Adjudication Rules" and constituted procedural violation. The Court ruled to annul the TRAB decision on 30 December 2015.

Nevertheless, the trial court did uphold the TRAB findings that the existing evidence adduced did not suffice to prove that the Cited Marks had reached the well-known trademark status prior to the application date of the Opposed Mark.

It was, therefore, necessary to appeal before the Beijing High Court.

ESSILOR argued that:

l  The Cited Marks, which are coined terms, are highly distinctive. Both marks have built a reputation in the Chinese optical market and thus have become well-known before the application date of the Opposed Mark.

l  The designated goods of the Opposed Mark and those of the well-known Cited Marks are highly relevant. The Opposed Mark applicant, a competitor of ESSILOR, exhibited bad faith in filing for the registration of the Opposed Mark. The registration of the Opposed Mark is detrimental to ESSILOR's legitimate rights.

ESSILOR adduced supplementary evidence proving that the relevant public of the designated goods of the Opposed Mark largely overlaps with that of the Cited Marks, so that the relevant public is likely to associate the Opposed Mark with the Cited Marks and be misled, which prejudices ESSILOR's interests.

The Court of Appeal ascertained that the Cited Mark 2 "依视路" had reached the well-known trademark status before the application date of the Opposed Mark. On 29 November 2017, the Court of Appeal corrected the findings of the first instance court, while upholding its decision to rescind the TRAB decision for failing to address all ESSILOR's claims.

Contributors: Ms. Ming Xingnan & Ms. Wang Yan