In a final judgment dated December 26, 2022 [(2021) Jing Xing Zhong No. 3916], and after a legal battle lasting almost 10 years, the Beijing High Court has rejected the registration of trademark application No. 11485383, 资生堂石膏 (SHISEIDO PLASTER in Chinese characters; the opposed trademark) in Class 19 under Article 13, paragraph 3, of China Trademark Law, recognizing the cited trademark 资生堂 (SHISEIDO in Chinese characters) as a well-known trademark used on cosmetics and extending cross-class protection to the trademark 资生堂 to Class 19.

A Chinese company named Jingmen Shiseido Plaster Industry Co., Ltd. (the opposed party) filed the opposed trademark for the goods plasters, etc., on September 12, 2012. Shiseido Co., Ltd. filed an opposition and prevailed.

A CNIPA (China National Intellectual Property Administration) decision confirmed that the Chinese trademark 资生堂” (SHISEIDO in Chinese characters) is well-known for cosmetics, and decided that it is not a fixed term or a common phrase but has a high level of originality and distinctiveness. In light of this, CNIPA found that the opposed mark constitutes a copy and imitation of the cited trademark.

The opposed party filed an appeal with the Beijing Intellectual Property Court, which ruled that the evidence in the files was insufficient to prove the claimed well-known status of the trademark 资生堂 (SHISEIDO in Chinese characters), and reversed CNIPO’s decision [(2016) Jing No.73 Xing Chu No. 6291].

In the second instance to the Beijing High Court, Shiseido supplied evidence to prove the well-known status of its trademark, including statistics on sales volumes, tax payment, advertisement expenses, distribution contracts for selling SHISEIDO products, VAT invoices, advertisements in Chinese newspapers and magazines obtained by searching at the national library, favorable decisions made by the CNIPA, and courts, all dated within the three-year term prior to the filing date of the opposed mark. Based upon the new evidence, the Beijing High Court reversed the lower court’s decision. Consequently, 资生堂 (SHISEIDO in Chinese) is protected as a well-known trademark again and given cross-class protection to Class 19.

Source:https://www.inta.org/perspectives/law-practice/china-new-evidence-is-decisive-in-shiseidos-well-known-trademark-victory/