Beijing No.1 Intermediate People's Court recently made its first instance verdict in the case of McDonald's Corporation's trademark dispute, approving registration of the trademark 麦肯基 MCCONKEY filed by Guangzhou Mcconkey Food Company owned by a person named He Lechao, upholding the previous decision made by the Trademark Review and Adjudication Board (TRAB) under the State Administration for Industry and Commerce (SAIC) that the trademark 麦肯基 MCCONKEY constitutes no similarity with McDonald's Corporation's trademarks 麦当劳 and McDonald's.

In December 2003, He Lechao applied for registration of No. 38041030 trademark 麦肯基 MCCONKEY to the Trademark Office (TMO) under SAIC, certified to be used in services of coffee bar, fast food restaurant, restaurant on Class 43. In December 2007, McDonald's Corporation challenged the trademark in question during the publication period and sought rejection to TMO on the ground of similarity.

Denied by TMO, McDonald's Corporation then brought the case to TRAB three years later in December 2010. McDonald's held that trademarks McDonald's, Mc had gained popularity in the world and in China as well-known restaurant brands. The trademark in question copied their registered trademark McDonald's and were used on the same class, then similarity was constituted. McDonald's Corporation held that He Lechao obviously violates the principle of good faith and his registration should be rejected.

TRAB held that the evidences presented by McDonald's Corporation during the publication period failed to prove the reference trademarks McDonald's and 麦当劳 are well-known trademarks before the trademark 麦肯基 MCCONKEY in question was registered. In parallel, the two trademarks are disparity in deign, pronunciation, overall appearance. Even if the two marks are used on the same class, no confusion and misleading will be caused among the consumers and the trademark in question should be registered.

Disgruntled McDonald's Corporation then brought TRAB, He Lechao and his company to the court. McDonald's Corporation questioned He Lechao's qualification in conducting catering business, and held that the trademark in question obviously copied their registered trademarks McDonald's and 麦当劳 . The two marks are similar in function and appearance and He's registration should be denied.

According to Article 28 of Chinese Trademark Law, where an application for registration of a trademark is not in compliance with the relevant provisions of this law, if the trademark is identical with or similar to a trademark of another person that has been regis tered or accepted in respect of identical or similar goods, the TMO shall refuse to accept the application and shall not publish the same. The court held that similarity or not is the key to conclude the case.

The court held that the trademark in question is disparity with sion and misleading will be caused among the consumers and the trademark in question should be registered. The court upheld TRAB's decision and the trademark in question was approved. A ccording to the plaintiff's attorney, McDonald's Corporation hasn't instituted an appeal so far.

(by Wang Guohao)

(Source: CHINA REPORT INTELLECTUAL PROPERTY)