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WRIGLEY won the “益达” trademark dispute retrial case at the Supreme Court
2017-9-4

Recently, the American confectionery leader WM. WRIGLEY JR. COMPANY (“WRIGLEY”) received a favorable ruling “(2017) Supreme Court Administrative Retrial No. 4107” on No. 1934739 “益达” trademark dispute retrial case rendered by the Supreme Court, which rejected the retrial application filed by Nanjing Yahui Duofen Daily Chemicals Co., Ltd. (“Nanjing Yahui Duofen”). 

We on behalf of WRIGLEY requested that the goods “toothbrush” (class 21) and “chewing gum” (class 30) be recognized as similar goods, so that the disputed mark should be invalidated for registration based on WRIGLEY’s prior “益达” trademark in class 30. Since it is quite difficult to obtain cross-class protection in this case, we submitted a large amount of evidence in the administrative and court proceedings to prove the awareness/reputation of WRIGLEY’s “益达” trademark in the oral care industry, argued the high relevance of toothbrush and chewing gum in respect of function, sales channels, target consumers, etc., and the likelihood of market confusion. We also maintained that WRIGLEY’s  “益达” trademark shall be granted stronger protection appropriate to its high reputation.

The Supreme Court finally ruled that, although toothbrush and chewing gum fall in different classes under the Chinese Classification of Similar Goods and Services, both have the function of oral cleaning and care, and both belong to daily necessities commonly sold in shopping malls, supermarkets etc. Moreover, with the improvement of people's living standards and change of people's consumption concept, oral hygiene are being paid more and more attention, and the consumption groups of chewing gum are also expanding. Therefore, there is high relevance between toothbrush and chewing gum in terms of function, purpose, producers, sales channels, consumers, etc. The Supreme Court finally recognized the disputed mark “益达” and WRIGLEY’s “益达” trademark constitute identical trademarks in respect of similar goods, by considering the sameness of marks, relevance of goods, and especially the reputation of WRIGLEY’s “益达” trademark, etc., which will mislead the consumers as to the sources of goods, and the registration of the disputed mark “益达” shall be invalidated.

The Supreme Court held that, when WRIGLEY’s “益达” trademark enjoys very high reputation in the oral care industry, the standard for “similar goods” shall be applied in a moderately less rigid manner. The court finally overcome the restriction of the Chinese Classification of Similar Goods and Services, and recognized toothbrush in class 21 and chewing gum in class 30 as similar goods. The ruling serves to avoid the possibility of market confusion due to coexistence of two different kinds of goods under the same trademark, which fully respects the function of trademark to identify sources of goods, meets the legislative intent of the Trademark Law to prevent market confusion and safeguard consumer’s rights and interests, and implements the judicial policy that the degree of protection shall be appropriate to the value of the intellectual property. The ruling also has important reference and guidance value for the correct understanding and application of the criterion for “similar goods” in similar cases.

This is another victory of our litigation team in the retrial proceeding at the Supreme Court, which again shows the professionalism and expertise of our team. 

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