Beijing High Rejects Novartis' TM Registration of "Alcon"
Novartis' final hope of registering its No.22991917 "Alcon" trademark (trademark in dispute) dimmed recently. Filed on March 20, 2017, requesting certified to be used on Class 9 goods including contact lens, the Swiss firm's application would later be denied by the former Trademark Office of the State Administration for Industry and Commerce (TMO) on the grounds of its similarity with No. 4875585 trademark "Aicon" (reference trademark).
Novartis then pled for a review at the former Trademark Review and Adjudication Board (TRAB), also under the former SAIC, arguing that the trademark in dispute and the reference trademark are not similar and are not used on the same or similar goods; the trademark in dispute has laid claim to a certain amount of reputation, and its co- existence with the reference trademark does not cause confusion and misidentification among consumers; other trademarks in similar cases have been approved for registration; the reference trademark is pending revocation, making itself vulnerable.
On August 15, 2018, the former TRAB decided that, as of the trial, the reference trademark had still been valid; the trademark in dispute and the reference trademark were similar in calling, letter composition among other things, making them similar trademarks used on the same or similar products, in this case, glasses and contact lenses; the evidence submitted by Novartis was not sufficient to prove that the trademark in dispute, after being put into use, had generated reputation distinct from the reference trademark, and other trademarks' registration precedents cannot be the basis for preliminary assessment of the trademark in dispute.
Therefore, the former TRAB decided to reject the application for registration of the trademark in dispute. Novartis then brought the case to the Beijing IP Court, noting that it has filed an application for review of the trademark revocation on the grounds that the reference trademark has not been used for three consecutive years, and is now in the midst of a first- instance trial; the reputation of No. 721035 trademark "ALCON" and No. 3632075 trademark "Alcon", both registered by Novartis, has been extended to the trademark in dispute, and the coexistence of the two trademarks does not cause any confusion; the two trademarks differ greatly in terms of font, overall complexion and pronunciation.
Beijing IP Court held that, as of the conclusion of the trial, the reference trademark is still valid and legal; the trademark in dispute and the reference trademark are similar; the evidence of the reputation of the prior trademarks submitted by Novartis is not sufficient to prove the trademark in dispute can be distinguished from the reference trademark, and other trademarks' registration precedents cannot automatically trigger the registration of the trademark in dispute. The Court dismissed Novartis' claim in the first instance on May 17, 2019.
Novartis then appealed to the Beijing High People's Court, arguing that the trademark in dispute was a continuation registration of its previously registered No. G1088618 trademark "ALCON" (hereinafter referred to the basictrademark). The Court held that the trademark in dispute and the reference trademark are similar trademarks used on the same or similar products; as of the conclusion of the trial, the reference trademark is still a valid registered prior trademark. Novartis's argument is groundless that the trademark in dispute should be approved for registration just because its basic trademark has been approved for registration; the situation where other trademarks are approved for registration is not a natural basis for the trademark in dispute to be approved for registration. In this connection, the Court rejected the appeal of Novartis and upheld the trial Court judgment.