Case Summary

Shanghai Oriental Glasses Co., Ltd. (hereinafter referred to as “Shanghai Oriental”) was first established in 1928. In 2004, Guangzhou Oriental Glasses Chain Store, Ltd. (hereinafter referred to as “Guangzhou Oriental”) applied for registration of 东方 (“oriental” in Chinese) mark in respect of optical shop service in Class 44, which was opposed by Shanghai Oriental based on its prior right. The Trademark Office made a decision to refuse the application of Guangzhou Oriental for infringing Shanghai Oriental’s prior business name right and its prior use based trademark right over 东方眼镜 (Oriental Glasses). Guangzhou Oriental applied for review with Trademark Review And Adjudication Board (TRAB), who decided to approve the application of Guangzhou Oriental on the grounds that 1) although东方 (oriental) is a Chinese time-honored business name owned by Shanghai Oriental, its visibility is mainly in Shanghai area, while Guangzhou Oriental develops its business mainly in Guangzhou, so there should be no confusion aroused; and 2) Guangzhou Oriental had also earned a considerable level of visibility after 25 years of development.

Shanghai Oriental filed an administrative litigation with and received support from Beijing First Intermediate People's Court for the due protection that should be given to a time-honored business name. Guangzhou Oriental appealed to Beijing Higher People's Court, who revoked the first-instance ruling based on the same grounds as of TRAB decision.

In December 2014, Shanghai Oriental applied for retrial of the case by Supreme People's Court. The Supreme Court accepted the case and made a retrial ruling on December 23, 2016, which decided that Guangzhou Oriental’s application for registration of 东方mark in respect of optical shop services in Class 44 infringed on prior business name right of Shanghai Oriental“东方”(oriental) and shall not be approved for registration.

Typical Significance

The Oriental Glasses case is of great significance in the IP protection of China time-honored business names. It demonstrates the high awareness of right protection by owners of Chinese time-honored names nowadays. It also delivers an important message that Chinese time-honored business names will be rendered with “stronger protection” in accordance with laws.