Cosmetic company appeals toothpaste trademark ruling

By Zhang Zhao (China Daily)
Updated: 2012-03-14

With the dispute under review by industry and commerce authorities, Guangzhou Shiqi Cosmetics Co Ltd has filed an appeal in the Beijing High People's Court to overturn a lower court ruling that it violated the trademark of Smith Kline & French Laboratories.

Last August, Beijing No 2 Intermediate People's Court ruled that Shiqi Cosmetics should cease using its ZMShike trademark and pay 200,000 yuan ($31,680) in compensation to SK&F, a subsidiary of pharmaceutical giant GlaxoSmithKline, whose China division is headquartered in Tianjin.

Shiqi Cosmetics filed for the ZMShike trademark in 2004, which SK&F challenged in a lawsuit last year alleging the name shares the same Chinese characters and pronunciation as SK&F.

The court found that the Chinese names for SK&F and GSK are widely known in China, and the Guangzhou company's trademark is an infringement that constitutes unfair competition.

SK&F also filed an objection with the State Trademark Office, but the office ruled in 2010 that the two trademarks are "not similar". The Tianjin company re-filed its protest and the disputed trademark is now under review.

Xi Yubin, a lawyer for Shiqi Cosmetics from the United Zhongwen Law Firm in Beijing, said the trademarks registered by the two companies are used on different types of goods.

ZMShike was used in daily products such as toothpastes, while GSK is used for medicines. Although the trademark GSK was also registered for daily personal products, none have been made using the name, according to Xi. GlaxoSmithKline's toothpaste is sold under the Sensodyne trademark.

"According to the 'one trademark, one application' principle of the trademark law, Shiqi Cosmetics' trademark should be legal," said the Zhongwen Law Firm's senior partner Zhao Xinwu.

"As far as the trademark office's records are concerned, they are two independent trademarks," said Zhao Hu, head lawyer at the intellectual property rights division of the Beijing H&J Law Firm.

"The court's verdict should have come after the ruling by the trademark office," he said. "To judge whether it was unfair competition, the key is to find out whether the Guangzhou company's trademark has been displayed properly."

Jiang Zhipei, former presiding judge of the IP division at the Supreme People's Court and professor of IP studies at Renmin University, noted "it could be infringement if the trademark emphasizes the Chinese name (similar to SK&F) but uses only a different font, color or size".

zhangzhao@chinadaily.com.cn

(China Daily 03/14/2012 page17)