Ling ZHAO of the MARQUES China Team reports on a decision by the Supreme People’s Court (SPC) regarding alleged infringement of the “mk” trade mark by Michael Kors Company.
On 30 March 2020, the SPC gave a judgement concluding that there was no infringement by Michael Kors Company ((2019) Zui Gao Fa Min Shen No. 6283). The Court rejected the claims of the plaintiff Shantou Chenghai Jianfa Handbag Factory (Jianfa), finding there was no likelihood of confusion.
This case involves the trade marks shown on the right.
|Trade mark of Jianfa (plaintiff)
|Trade marks of Michael Kors Company (defendant)
History of the case
On 7 February 1992, the Jianfa company obtained trademark registration No. 1244366 for the mk mark in Class 18 for “handbags; sports bags; travel bags, etc”.
Michael Kors and its affiliates use the MK marks shown below right, on metal decorative buttons and corresponding product advertisements and product brochures, in store decorations, on product lining, pad paper and membership plans, and on their website and WeChat customer service.
Jianfa argued that these uses by Michael Kors have misled the relevant public, causing reverse confusion.
Jianfa sued Michael Kors Company for trade mark infringement and requested the sales of Michael Kors’s handbags to be stopped, claiming damages of RMB95 million.
The courts of the two instances denied the claims of Jianfa, concluding that there was no infringement. Jianfa then filed a retrial application with the SPC.
Findings of SPC
The SPC held that the trade mark of Jianfa is a simple combination of two lowercase letters “m” and “k”, and its distinctiveness is mainly reflected in the font design thereof. Therefore, when determining the similarity the trademarks of the two parties, we cannot reach a conclusion based simply on the composing letters.
By comparison, we can see that the font designs of the alleged infringing trade marks belonging to Michael Kors are quite different from that of the cited mark of Jianfa, especially the logos with figurative elements Therefore, the alleged infringing trade marks of Michael Kors and the trade mark of Jianfa do not constitute identical marks, and should not be viewed as such.
Likelihood of confusion
Further, to judge if the trademarks of the two parties are similar, we need to consider if there is a likelihood of confusion. To determine if there is any likelihood of confusion, it is necessary to consider the actual use of the alleged infringing mark, as well as the distinctiveness and reputation of the prior cited trade mark. The same criteria apply to reverse confusion.
In this case, the prior cited mark is composed of two common letters with weak distinctiveness. Although the prior cited mark has been registered and used since the year 1999, most goods have been exported, with a very limited amount sold in the Chinese market. Thus the prior cited mark of Jianfa has not acquired high distinctiveness or reputation.
Michael Kors has been using the alleged infringing mark "mk" on the metal buckle of trunks and bags since 2008. Michael Kors has been using "MK" as the acronym of "Michael Kors" in the sales channels of its goods, including exclusive stores, official websites and WeChat stores, since entering the Chinese market in 2011. Through the wide-scale and continuous use in the market, "MK" has become known to the public as the acronym of the trade mark "Michael Kors", and obtained a certain reputation. Michael Kors has no intention to borrow the goodwill of the mk trademark of Jianfa.
In addition, the alleged infringing “MK” trademark of Michael Kors is usually used together with the trademark "Michael Kors", which is enough for consumers to identify the sources of the goods, without becoming confused with the “mk” trademark of Jianfa.
Further, the goods of Jianfa are mainly for export with low prices, while the alleged infringing goods are mainly sold in exclusive stores and counters, with a relatively high price. Ordinary consumers usually pay more attention when they purchase the alleging infringing goods. Therefore, the consumers of the goods of the two parties are also different.
Based on these findings, the SPC held that it is not easy for the relevant public to be confused as of the sources of the goods of the two parties. Moreover, Jianfa began to change its mk trademark in 2015, in a way which makes it resemble the design of the MK trademark of Michael Kors, showing the intention of Jianfa to imitate the alleged infringing trade mark and actively seek confusion.
The SPC therefore concluded that the use of the MK trademarks of Michael Kors does not infringe the exclusive right of the trade mark of Jianfa, and the Court did not support the claim of reverse confusion.
Bad faith of the prior trade mark owner
The decision of second instance by Zhejiang High Court ((2018) Zhe Min Zhong No. 157) held that in the judgment of reverse confusion, the criteria such as the similarity of trade marks, the distinctiveness and the reputation, and the attention of relevant public make no difference to positive confusion.
It is worth noting that instead of using its registered mk trade mark, Jianfa tried to register and use trade marks which are more like the MK trade marks of Michael Kors. Obviously, the plaintiff doesn’t intend to simply protect its exclusive right to use the registered trade mark, but to deliberately pursue and create confusion among the relevant public. The Court held that although it was necessary to protect the registered trade mark right of the plaintiff, when its behaviour shows its bad faith to cause confusion or to mislead the public, the protection of its trade mark right should be limited.
In the case of reverse confusion, it is necessary to consider the intention of the prior trade mark owners. The good faith principle in accordance with Article 7 of the China Trademark Law shall not only apply when registering a trade mark, but also when the trade mark is used.
Ling ZHAO is a Trademark Attorney with CCPIT Patent and Trademark Law Office and a member of the MARQUES China Team