Beijing High: Rolls-Royce Invokes Well-known Mark Previleges to off Similar Marks
Recently, Beijing High People's Court wrapped up the trademark dispute between Rolls- Royce Motor Cars and Guangdong Konbom Technology & Industrial Company with its final-instance judgment, holding that some of Konbom Company's registered trademarks No.14355333 and No.14355334 保 劳 斯, No.14355335 and No.14355336 保 莱 斯, No.14355337 and No.14355338 宝劳斯 and No.14355339 and No.14355340 宝 莱 斯 (trademarks in dispute) and the well- known trademark No.4979295 劳斯莱斯 (the cited trademark) (Note: official Chinese translation of Rolls-Royce) constituted similarity on the same or similar goods and trademarks in dispute prejudiced the interests of RollsRoyce as the owner of the well- known trademark. Therefore, the decision of upholding the trademarks in dispute made by the Trademark Review and Adjudication Board (TRAB) of the former State Administration for Industry and Commerce (SAIC) was revoked and it needed to make a de novo one.
Trademarks in dispute were filed for registration by Konbom in April 2014, and would be certified to be used on goods such as cars and cartyres in 2016.
Rolls- Royce lodged an invalidation request with the TRAB, alleging that the cited trademark had been wellknown to the public before the filing date of the trademarks in dispute, enabling its establishment as well- known trademark. The trademarks in dispute constituted similarity on the same or similar goods with the cited trademark and may confuse the public, causing prejudice to the company's interests.
TRAB held that the evidence could prove the cited trademark enjoyed a high reputation before the filing date of the trademarks in dispute. Considering the differences in characters formation and pronounciation, the trademarks in dispute did not constitute reproduction and imitation of the cited trademark. In addition, goods such as the adhesives for tyres attached with the trademarks in dispute were different from the goods such as cars attached with the cited trademark in terms of the functions and usage. Registration and use of the trademarks in dispute had not confused the relevant public. Therefore, TRAB upheld the trademarks in dispute.
The disgruntled Rolls- Royce then brought the case to Beijing IP Court.
Beijing IP Court held that the trademarks in dispute approved to be used on goods such as car tyres constituted similarity on the same or similar goods with the cited trademark while used on car tyres. The interests of Rolls-Royce as the owner of the well- known trademark would be harmed though trademarks in dispute did not constitute similarity on the same or similar goods while used on adhesives for tyres. Accordingly, the IP Court rebuffed the decision made by the TRAB at the first instance and ordered it to make a new one.
TRAB then appealed to Beijing High People's Court. After hearing, Beijing High held that the IP Court ascertained the facts clearly and applied the law correctly and upheld the firstinstance ruling accordingly