Is HEYTEA Coffee's Trademark Registration Deceptive? HEYTEA Sues the National Intellectual Property Administration!

Domestic new-style tea brands continue to expand across boundaries. HEYTEA, known for "always being more than just tea," began its crossover into the coffee business in March 2019. Breaking away from traditional coffee-making methods, HEYTEA pioneered the "milk-tea-ification" of coffee by adding ingredients like brown sugar boba, pudding, Oreo crumbs, and cheese foam to coffee beverages, making coffee products exceptionally appealing.

Meanwhile, the product's packaging style featured a strong "Hong Kong-style" aesthetic, aligning with the emerging national trend that was gaining popularity at the time. As a result, it received considerable praise upon launch and encouraged many people who had never tried coffee products before to give them a try.

Trademark Application Challenges

As the "HEYTEA Coffee" series gradually gained popularity, HEYTEA actively sought to further integrate milk tea and coffee elements. The company strategically worked to align its brand with trademarks, applying for trademark registration in categories including coffee, making thorough preparations for its coffee product launch. However, the trademark application for "HEYTEA Coffee" has not received approval from the Trademark Office of the National Intellectual Property Administration.

After review, the Trademark Office determined that the distinctive part of the "HEYTEA Coffee" trademark, "HEYTEA," is similar in text composition and identical in meaning to the distinctive text "囍茶" of the cited trademark (shown below), constituting similar trademarks. Additionally, the goods for which the "HEYTEA Coffee" trademark is designated—such as "coffee beverages; milk coffee beverages; cocoa beverages"—belong to the same category of goods as the tea beverages and other products approved for the cited trademark. Their coexistence would likely cause confusion among the relevant public regarding the source of the goods. Therefore, the Trademark Office decided to reject the "HEYTEA Coffee" trademark registration application.

Legal Proceedings and Court Decisions

According to the China Trademark Network, Shenzhen Meixixi Catering Management Co., Ltd., HEYTEA's operating entity, applied to register the "HEYTEA Coffee" trademark on June 13, 2019. The current trademark status is under review after rejection.

HEYTEA company was dissatisfied with the rejection of the "HEYTEA Coffee" trademark. HEYTEA argued that the use of the "HEYTEA Coffee" trademark on the goods under review would not cause public confusion. Therefore, HEYTEA's affiliated company, Shenzhen Meixixi Catering Management Co., Ltd., filed a lawsuit against the National Intellectual Property Administration in November 2020, requesting the court to revoke the challenged decision and order the defendant to make a new decision. Additionally, they submitted several prior judgments and a list of trademark registrations containing the word "coffee" that had been approved by others in Class 30 related goods.

After court review, the Beijing court issued the "First-Instance Administrative Judgment of Shenzhen Meixixi Company vs. National Intellectual Property Administration" on May 26, 2022.

The court held that regarding the National Intellectual Property Administration's claim that the trademark's use on goods such as sugar, bread, pudding, chocolate chips containing ground coffee beans, and cocoa beverages would likely cause consumers to be misled about the characteristics or quality of the goods. Therefore, in accordance with Article 10, Paragraph 1, Item (7) of the Trademark Law—"trademarks that are deceptive and likely to cause the public to be mistaken about the quality, characteristics, or place of origin of goods"—the court affirmed the decision to reject the trademark application. (So-called deceptive trademarks refer to those that, due to the trademark itself or its constituent elements being deceptive, are likely to cause the relevant public to have incorrect understanding of the source, origin, quality, characteristics, etc., of the goods, thereby misleading consumers.)

The court also stated that the evidence submitted by Shenzhen Meixixi Company was insufficient to prove that the "HEYTEA Coffee" trademark would not mislead consumers. Therefore, its related claims lacked factual and legal basis, and the court did not accept them.

Regarding the National Intellectual Property Administration's decision to reject the trademark application under Article 30 of the Trademark Law—"trademark applications that do not comply with the provisions of this Law or are identical or similar to trademarks already registered or preliminarily approved by others on the same or similar goods"—the court also affirmed this decision after review.

The court held that the distinctive part of the trademark in question, "HEYTEA," is similar to the Chinese character part "囍茶" of cited trademarks 1 and 2 (Figure 3 of this article), which would likely cause confusion among the relevant public regarding the source of the trademarked goods. At the same time, Shenzhen Meixixi Company failed to provide sufficient evidence to prove that the disputed trademark had acquired distinctiveness through use and would not easily cause confusion among the relevant public.

Comprehensively considering that the National Intellectual Property Administration's findings of fact were clear, the application of law and conclusions were correct, and the procedures were legal, the plaintiff's litigation claims lacked factual and legal basis. Therefore, in accordance with the provisions of Article 69 of the Administrative Litigation Law, the court rejected Shenzhen Meixixi Company's litigation claims.

Image source: Network

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