Tea bags, appearing in early 20th century, became popular in late 1970s. In such a good situation in 2004, Shanghai Dili Croft Tea Co., Ltd. was found at the right moment. However, after one month of the stablishment, when Shanghai Dili Croft applied for registration No. 4410329 "Difute Teaforte and the logo" trademark in the tea, honey and other category of goods, they encountered objection from American company Difute. The five-year seesaw battle of trademark started.

After the Trademark Office under the State Administration for Industry and the trademark review and adjudication board (TRAB) approved "Difute Teaforte and the logo", the American Difute initiated the administrative proceeding. Recently Beijing Higher People's Court made a ruling that the "Difute Teaforte and the logo" trademark registration should be approved to Shanghai Dili Croft. Finally the dispute reached an end.

Registration triggered disputes

American Difute believes that Shanghai Dili Croft, with which it has bussiness contact, made the application for registration "Difute Teaforte and the logo" trademark without authorization. It constituted infringement to article 15 of China Trademark Law: Agents apply for trademark registration over principle's trademark in their own names without authorization by principles; it was also an imitation of its well-known trademark, violating the right of corporate name and falling into trademark infringement.

Court of First Instance believed, that under the situation that the legal representative was the same person, Shanghai Dili Croft as a subsidiary base on an exclusive distribution agreement of Pangda Company - the exclusive distributor of American Difute in China, knowing the "Tea Forte" trademark of American Difute, applied for registration of the involved trademark which was very similar to "Tea Forte", was against article 15 of China Trademark Law. Accordingly, the court of first instance ruled to cancel the TRAB's decision.

Shanghai Dili Croft and TRAB refused to accept the rules and appealed. 

Trademark maintained by the final judge

Considering the focusing point of both sides, the Beijing Higher People's Court believed, that the exclusive distribution agreement signed between Pangda and American Difute was mainly based on distribution of tea bag product distribution, not related to the brand name as well as how to use "Tea Forte" trademark. According to the relative nature of the contract, the contract had no constraint to Shanghai Dili Croft, and the contract was ultimately canceled due to the lack of actual performance. Therefore, the existing evidences cannot prove that the direct agency relationship between Shanghai Dili Croft and American Difute existed. And the "Tea Forte" English trademark of American Difute was registered after the involved trademark application. The existing evidences cannot prove that American Difute used and protected "Tea Forte" trademark in China before.

Meanwhile, the Chinese part of the involved trademark is easier for Chinese public to recognize. It is in general different from "Tea Forte" trademark of American Difute. In the situation that "Tea Forte" is not actually used in Chinese market, the involved trademark has built good reputation, public recognition and stable market, through the marketing and widely using by Shanghai Dili Croft. At the same time, there is no possibility to confuse the two trademarks in Chinese market. In the case, disapproval of the involved trademark is not conducive to the protection of the subject who contributed to the reputation and market value of the trademark. 

In summary, the court ruled that the involved trademark was not the case against the Trademark Law. And the court maintained the involved trademark as a final judgement.               (by Wang Guohao)

(Source: CHINA REPORT INTELLECTUAL PROPERTY)