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CNIPA: BMW Knocks Local Candy Maker Off Free-ride of Trademark

The German company BMW had a rift with Guangdong Tianma Fruit Drinking Company over the 宝马 trademark (note: Chinese translation of BMW). Beijing High People's Court made the decision recently.

The court of final-instance held that the No.6115886 宝马 trademark (trademark in dispute ) of Tianma company constituted similarity with BMW's No.673219 BMW and its figure and No.663925 BMW trademark (cited trademark) when used on the same or similar products. In this connection, the court revoked the decision upholding the registration of the trademark in dispute made by the Trademark Review and Adjudication Board (TRAB) and asked TRAB to revisit the case.

The trademark in dispute was filed for registration by Tianma company in June 2007, and would be certified to be used on Class 30 products including chocolate and sweets in January 2010.

In April 2014, BMW filed for revocation of the trademark in dispute, alleging that trademark has diluted the famous 宝 马 and BMW trademark used on automobiles. In parallel, the trademark constituted similarity with its prior cited trademarks when used on the same or similar product. In addition, the trademark in dispute also infringes the trade name of BMW and its subsidiaries in China. Tianma copies and imitates the trademark of BMW in bad faith.

After examination, TRAB made a decision in April 2015, claiming that the trademark in dispute did not constitute similarity with cited trademark when used on the same or similar product. The trademark in dispute did not copy, imitate and translate the trademark of BMW, which did not impair the right of well- known mark status nor damage the prior trade name of BMW. In this connection, the TRAB upheld the registration of trademark in dispute. BMW then brought the case to Beijing IP Court.

After examination, Beijing IP Court held that the trademark in dispute constituted similarity with cited trademark when used on the same or similar product, and it was not necessary to invoke the well- known mark provision in the Chinese Trademark Law. So the Court revoked the TRAB decision made in its first instance ruling, and ordered TRAB to make a new decision. TRAB then brought the case to Beijing High People's Court.

The Court held that the BMW trademark has enjoyed reputation among the relevant public, and some people has recognized BMW as 宝 马 in China, so if both the trademarks appeared in the market, it may cause confusion among the public about the origin of product with those trademarks, or can be easily mistaken for there was some certain relationship with the providers, which constituted similarity when used on the same or similar product. There was no need to invoke the provision on protection of well-known mark. In this connection, the Court affirmed the judgment.

Source: China Intellectual Property News, CNIPA

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