"Mary Kay" Wins Cross-class Protection

Founded in 1963 in the US,Mary Kay Inc.,one of the world's largest direct selling skin care and cosmetics company, set up its first factory outside the US in 1994 in Hangzhou,China. Hebei Changli Better Wine Limited (hereinafter referred to as Changli Company) intended to register "玫琳凯 MARYKAY" trademark on alcohol product,which triggered Mary Kay's objection. After the Trademark Review and Adjudication Board (TRAB) under the State Administration for Industry and Commerce approved the trademark,Mary Kay filed an administrative proceeding to the court.

Recently,Beijing No.1 Intermediate People's Court rendered its first instance rule,which revoked TRAB's decision and required reexamination.
Changli Company filed NO. 6647904 "玫琳凯 MARYKAY" trademark application in April, 2008 and certified to be used on Class 33 goods including wine,brandy and other. Within the legal objection period,Mary Kay submitted the objection application but was rejected.

Mary Kay claimed two cited trademarks constituting the well-known trademark: No. 1275186 "MARY KAY" trademark, applied in February 1998 by Mary Kay, certified to be used on Class 3 goods including cosmetics, lipstick and other commodities; No. 1380186 "玫琳凯" trademark, applied by Mary Kay in November 1998, certified to be used on Class 3 products including cosmetics, concealer and other commodities. Currently, the two cited trademarks are both within the validity period. After TRAB made the decision to approve the trademark in question, Mary Kay filed an administrative proceeding to the court. The court held that the evidence provided by Mary Kay can prove that the two cited trademarks have constituted well-known trademarks on cosmetic products prior to the application of the trademark in question. The trademark in question was the combination of the two well-known trademarks "玫琳凯" and "MARYKAY", constituted plagiarism, copying and imitation to Mary Kay's well-know trademark. Changli Company's application for the trademark in question constituted the situation of inappropriately using Mary Kay's well-known trademark. Accordingly, the court made the decision.