On February 16, 2023, the Beijing IP Court announced a ruling in Mattel’s favor against a Chinese applicant attempting to register a trademark for 芭比堂 (Barbie Tang) in class 44 for goods and services including animal breeding, artificial insemination (for animals), test tube fertilization (for animals), pet bathing and veterinary assistance. Yunchong (Beijing) Animal Medical Technology Co., Ltd. (云宠（北京）动物医疗科技有限公司) operates a chain of animal hospitals operating under the name of 芭比堂动物医院 (Barbietang Animal Hospital) and applied for a trademark for 芭比堂 (Barbie Tang) in class 44. Yunchong lost a reexamination at the China National Intellectual Property Administration (CNIPA) based on Mattel’s earlier mark for Barbie in class 44. The Beijing IP Court then affirmed the decision.
The Beijing IP Court reasoned:
1. The services designated for use by the trademark in dispute and the services approved for use by the cited trademark are both animal breeding in Class 44 . The parties have no objection to this.
2. The trademark in dispute is composed of the Chinese character “巴比堂”, and its distinctive identification part is “巴比” which corresponds to the cited trademark “Barbie”.
3. The evidence submitted by the third party Mattel can prove that “Barbie” and “巴比” have been widely publicized and used for a long time before the application date of the disputed trademark, and have a relatively high reputation in the 28th class of toy products, and have been known by the relevant public. It is known that “Barbie” and “巴比” form a longstanding corresponding relationship .
4. Although the evidence submitted by the third party Mattel is mainly focused on the 28th class of goods, not the 44th class of services in this case, the two are not completely unrelated. Toys and pet bathing are not completely connected, but there is still some relevance that can lead to confusion and misidentification by the relevant public.
5. Although the plaintiff submitted numerous evidences of use, it was mostly reflected in the name of the enterprise “Barbie Tang Animal Hospital”, the scope of protection of the right to the name of the enterprise is different, the use of the name of the enterprise cannot be equated with the use of the trademark in dispute, and the plaintiff still has other trademarks containing the words “Barbie Tang”.
Yunchong has appealed.
The full text of the announcement can be found here (Chinese only).