HongFangLaw ~?Chinese IP Law Updates ~ n’ 56
08 May 2018
The Tale of the Two Innisfree Chinese Trademarks
Have you ever seen a touch of delighting green dotted around shopping malls or business centers? It may be brought to you by a naturalistic brand of cosmetics from South Korea. Established in 2000, it opened its first flagship store in Shanghai in 2012 and now boasts over 300 outlets flourishing in central business areas in China.
The brand is none other than Innisfree, with a Chinese equivalent of “悦诗风吟” (read “YUE SHI FENG YIN”).
What if one day you bumped into another “YUE SHI FENG YIN”, but noticed it had its last character changed, resulting in a slightly different pronunciation? This “悦诗风茵” (“YUE SHI FENG YIN”) you see, is how much likely to be mistaken as the genuine “悦诗风吟” (“YUE SHI FENG YIN”)?
We HongFangLaw, representing the trademark owner INNISFREE CORPORATION, has filed an opposition on the company’s behalf against “YUE SHI FENG YIN” and won our client a favorable decision. The presiding administration China TrademarkOffice (CTMO) has refused to register the trademark in question, citing concerns of mistake and confusion over the similar trademarks among consumers if they were to coexist in the market as for how we argue in our application.
Our client’s trademark “YUE SHI FENG Y?N” is a coined word without any innate meaning fixed to it. However, it has acquired quite a reputation and distinctiveness in cosmetics after being promoted and used by INNISFREE CORPORATION.
Notwithstanding the fact that “YUE SHI FENG YIN” is also not a part of a conventional vocabulary in Chinese, it highly resembles “YUE SHI FENG YIN” in word composition and pronunciation. Had they been allowed to be used concurrently on cosmetics, consumers would almost be sure to find them confusing. It is exactly why the CTMO has adopted our opinions and made the refusal decision.
Therefore, it is safe to conclude that the two “YUE SHI FENG YIN”s are similar from the viewpoint of trademark use.
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