An appeal by plaintiffs Guangzhou Mona Lisa Building Materials Co. Ltd. and Guangzhou Mona Lisa Sanitary Appliance Co., Ltd. against a judgment made by the Trademark Review and Adjudication Board (TRAB) regarding the plaintiffs' request to invalidate the mark M MONALISA with respect to "Flush Toilets; Toilets" in Class 11 was rejected by the Beijing IP Court on January 26, 2018.
In 2012, the plaintiffs attempted to cancel the registered mark M MONALISA owned by Mona Lisa Group Co., Ltd., another company based in Guangzhou, based on the plaintiffs' prior registration for MONA LISA and Chinese characters with respect to "Bath fittings, Sauna bath installations, Shower cubicles, etc." in Class 11. On November 25, 2013, the TRAB ruled in favor of the plaintiffs with respect to "Flush Toilets; Toilets." SHANGPINGZI [2013] No. 116692. However, the mark was upheld by Beijing First Intermediate People's Court and Beijing Higher People's Court in two subsequent trials. According to judgment (2014) YIZHONGZHIXINGCHUZI No. 1741, the first of the two subsequent trials, the registered mark was considered a legitimate extension of protection deriving from the reputation of the registrant's prior registration of the same mark for "ceramic tiles" in Class 19. According to judgment (2016) JINGXINGZHONG No. 1946, the second of the two subsequent trials, both the marks and the goods concerned were considered dissimilar and the registrant's trademark reputation for the same mark on "ceramic tiles" could extend to the newly registered mark, which the plaintiffs wanted to cancel.
The plaintiffs were dissatisfied with the result and filed a retrial application with the Supreme People's Court, but it was rejected on June 23, 2017. According to the Beijing Higher People's Court's judgment, the TRAB made its second adjudication in favor of the registrant on July 6, 2016, which led to the plaintiffs' appeal to the Beijing IP Court. However, the appeal was rejected by Beijing IP Court on January 26, 2018, as ruled in judgment (2016) JING73XINGCHU No. 5134. The plaintiffs have appealed the first instance administrative lawsuit to the Beijing Higher People's Court, and a decision should be forthcoming. However, according to Judicial Interpretation [2017] No. 2, the Supreme People's Court previously ruled that an appeal against a decision of the Beijing Higher People's Court that has already taken effect should be rejected. Thus, it is likely that the appeal will be unsuccessful.
This article was first published in INTA Bulletins, May 15, 2018, Vol.
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