Victoria's Secret Dispute Case: Perfect Your Brand Plan in China

Borsam IP


On February 21, 2011, a Chinese, Zhu Dongliang, hereby referred as to the defendant) filed the trademark application for "Weimi" and registration was indeed granted with the number 9132008 on class 3, covering goods of cosmetics, essential oils, shampoos, fragrances for cosmetics, lavender oil and so on.
In June 2016, Victoria's Secret Stores Brand Management, Inc. (hereby referred as to the plaintiff) filed a request of trademark invalidation for "Weimi" No. 9132008 for the reason that the prior trademark No. 4481219 and trademark No. 9132008 constitute similar trademarks on the same or similar goods.
CNIPA (National Intellectual Property Administration) accepted the request. After examination, they thought the disputed trademark and cited trademark have constituted similar trademarks according to Article 28 of Trademark law, 2001, and approved the invalidation for the contested trademark.
Zhu Dongliang dissatisfied with the invalidation decision and brought the lawsuit to the court on January 16, 2018. He argued that the exclusive right to the trademark, the disputed trademark, and the cited trademark was quite different in the meaning, the element of the constitution, and the appearance, which didn't constitute similar trademarks.

Beijing Intellectual Property Court heard an administrative dispute concerning the invalidation of the trademark "Weimi" No. 9132008 on May 7, 2020. The court held that the trademark "Weimi" and the cited trademark "Victoria's Secret" in Chinese constituted similar trademarks on the same or similar goods.
According to the court's judgment, the disputed trademark and cited trademark are both word trademarks, containing the same Chinese characters, which constitute similar trademarks. The goods of the two trademarks are in the same subclass, and it may mislead the public. It violates Article 28 of Trademark law, 2001. Victoria's Secret Stores Brand Management, Inc. also provided relevant media coverage and relevant rulings to prove there have some connections between Victoria's Secret in Chinese and Weimi. It showed that the brand enjoys a high reputation in the domestic and international markets. The function of the trademark is to distinguish the source of a product or service in the market, which is one of the important points to confirm whether it would cause customer confusion. There is a known connection between the two trademarks, and the relationship was formed spontaneously among consumers when the brand was established. It was not defined by the brand, so it is more identifiable.
Considering these factors, the court maintained the decision for the invalidation of the trademark "Weimi".
What we learn from this case, a nickname of a brand from the consumers also have similar functions of a trademark, and sometimes, it has a better memory effect in the local market than an official one. To perfect the brand plan in a local market, which is a non-English speaking country, listen to the local consumer what they name your brand, and then to include it in your brand protection plan.