"Mona Lisa" Trademark Case in China, a decision of procedural significance

In 2012, the two plaintiffs Mona Lisa Building Materials Co. Ltd. and Mona Lisa Sanitary Appliance Co. requested the cancellation of the registered trademark M MONALISA in Class 11 for “Flush Toilets owned by the Mona Lisa Group Co., Ltd. The plaintiffs based their claim on the prior registration of MONA LISA and Chinese characters in Class 11 for “Bath fittings, Sauna bath installations, Shower cubicles, etc.”. On November 25th, 2013, the Trademark Review and Adjudication Board (TRAB) decided in favour of the plaintiffs.

However, the Beijing First Intermediate People’s Court (IPC) and Beijing Higher People’s Court (HPC) upheld the registration. The IPC Beijing held, that the registered trademark is a legitimate extension of the protection deriving from the reputation of the defendant’s prior registration of the same trademark in Class 19 for “ceramic tiles”. The HPC Beijing affirmed this decision and stated that the defendant’s trademark reputation for the same trademark in the category “ceramic tiles” could be extended to the newly registered trademark. The plaintiffs applied for retrial at the Supreme People’s Court (SPC), which rejected the appeal on June 23rd, 2017.

In consequence, the TRAB changed its initial decision and upheld the trademark registration of the Mona Lisa Group on July 6th, 2016. The plaintiffs’ appealed against this decision to the Beijing IP Court, which rejected the appeal on January 26th, 2018. Against this judgment the plaintiffs have appealed again to the HPC Beijing, where the decision is pending. However, according to the relevant Judicial Interpretation, the SPC should dismiss a complaint against a decision that has already taken effect. Art. 30 of the relevant Judicial Interpretation clarifies: “Where a people's court has specifically determined the relevant facts and the application of laws in an effective ruling, a counter party (…) institutes a lawsuit against a ruling re-rendered by the Trademark Appeal Board according to the effective ruling, the people's court shall issue a ruling not to accept the case; and where a case has been accepted, the people's court shall rule to dismiss the lawsuit.” Therefore, it is highly likely that the latest appeal will be rejected.

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