AVIKO Catches a Break at Second Instance over TM Registration
AVIKO, a renowned Dutch potato food maker, filed an application for registration of the No.24384025 爱 味 客 郁 金 香 AVIKO TULIP and its figure trademark in 2017, but would see denials one after the other, leaving the Dutch company on a warpath to reverse them.
On May 27, 2017, AVIKO filed a registration application for the trademark in dispute to the Trademark Office (TMO) of former State Administration for Industry and Commerce, designating its use on Class 29 products including fish-based products.
After examination, the former TMO rejected the application of the trademark in dispute. According to the TMO document, the trademark in dispute constitutes similarity with No.12258410 爱 味 客 and its figure, No.18097228 愛 味 客, No.4958837 郁 金香 TULIP and its figure, No.7152229 郁金香, No.9880152 郁金香 DOPTOP TULIP FOOD and its figure, No.19772528 金 郁 香 and its figure, No.930632 郁 金 香, No.G908979 TULIP and its figure, No.G1070749 TULIP, No.13321374 TULIP and its figure (the I to X cited trademark ) when used on the same or similar products.
The disgruntled AVIKO then pled a request for review to the former Trademark Review and Adjudication Board (TRAB).
On September 6, 2018, TRAB rejected AVIKO's request on the grounds that the trademark in dispute contains 爱味 客 in cited I and II trademark, and TULIP in cited VIII, IX and X trademark, which constitute similarity with above cited trademarks. As the products on which the trademark in dispute was certified to be used were same or similar products with cited I, II, III, IV, V, VII, VIII, IX and X trademark, so the trademark in dispute constitutes similarity with above cited trademarks when used on the same or similar product.
AVIKO then brought the case to Beijing IP Court.
The IP Court held that the identifiable letters of trademark in dispute are AVIKO TULIP, which constitute similarity with the cited VIII and X trademark in letter composition as their identifiable letters are TULIP. So the court dismissed AVIKO's claim, holding its registration may cause confusion among the public.
AVIKO then brought the case to Beijing High People's Court along with mails between the company's agent and the agents of the cited VIII and X trademarks on negotiating the coexistence of the trademarks and the concluded trademark coexistence agreements.
The court of second instance held that the trademark in dispute was similar to the cited VIII and X trademarks in terms of letter combinations and structure, and was used on similar goods. However, in view of the fact that AVIKO submitted the relevant trademark coexistence agreement during the second-instance trial, and that the trademark in dispute was certified to be used on potato pancakes and other goods, there was no evidence to prove that the coexistence of the disputed trademark and the VIII and X cited trademarks would prejudice the public interest. In summary, the court evacuated the firstinstance judgment and the review decision made by the former TRAB, and ordered China National Intellectual Property Administration to make a de novo decision.
Source: China IP News