Extra is a type of sugar-free chewing gum launched by Wm. Wrigley Jr. Company of the United States. It is popular among consumers because of its dental care function. However, a trademark battle between Wrigley and Guangzhou Qiancai Cosmetic Company was launched since the later company filed trademark application of“益达 YiDa”on its toothpaste products.

The trademark in question was No.4317298“益达 YiDa”, which was filed for registration in October 2004, certified to be used in Class 3  products including soap, medicated soap, perfumed soap, toothpaste and leather detergent. In July 2010, Qiancai Company obtained the exclusive right of the trademark. Wrigley then filed an opposition to the Trademark Office (TMO) of the State Administration for Industry and Commerce (SAIC) of China, which was rejected by the office.

Wrigley then proposed objection reexamination to the Trademark Review and Adjudication Board (TRAB) of SAIC. Wrigley held that, the trademark in question was similar with Extra in character and pronunciation; the products on which certified to be used has same or similar function with Extra; thus the“ 益 达 YiDa”trademark should be revoked.

TRAB held that, the“ 益 达 YiDa” trademark was certified to be used on toothpaste, which was totally different with Extra used on non-medical gum. There were significant differences between the two trademarks in function, production processing and material, distribution channel. So the similarity was not constituted. TRAB then maintained the registration of that trademark.

Wrigley then brought the case to Beijing No.1 Intermediate People’s Court, which maintained the decision made by TRAB. After the appeal was rejected by Beijing Higher People’s Court, Wrigley brought the case to the Supreme People’s Court.

The Court held that, non- medical gum was similar with toothpaste in function, retail and consumption characteristics, so they belonged to similar products. The trademark in question constituted similarity with cited trademark when used on same or similar products. So the Court revoked the first- instance judgment and the final judgment and ordered TRAB to make new decision.

(by Mao Liguo)

(Source: CHINA REPORT INTELLECTUAL PROPERTY)