Recently, progress has been made in the dispute between the German company DR.FRITZ FAULHABER GMBH&CO.KG (FAULHABER) and ASIMEN TECHNOLOGY (HK) CO., LIMITED (ASIMEN). Beijing High People's Court upheld FAULHABER's claim and held that the No. 10791093 "FAULHABER" trademark (the trademark in dispute) registered by ASIMEN Company and the No. G735551 "Faulhaber" trademark and No. G1032589 "FAULHABER & Figure" trademark " (the reference marks) constitute similar trademarks used on similar goods, rejecting the decision of upholding the registration of the trademark in dispute made by the Trademark Review and Adjudication Board (TRAB) under the former State Administration of Industry and Commerce.

The trademark in dispute was submitted for registration by ASIMEN Company on April 18, 2012, certified to be used on Class 7 goods such as electronic industrial equipment and electrostatic industrial equipment on July 28, 2015,with the exclusive right valid from June 28, 2013 to June 27, 2023. FAULHABER lodged an invalidation request of the trademark in dispute on September 18, 2015, asserting that the trademark in dispute is similar with its previously registered reference trademark while being used on similar goods, and the registration of the trademark in dispute by ASIMEN constitutes the situation squatting the trademark that has been used and has a certain influence by improper means provided in Article 32 of the Chinese Trademark Law; in addition, there was a business relationship between ASIMEN and FAULHABER. Therefore, its application for registration of the trademark in dispute violates Article 15 of the Chinese Trademark Law.

On May 24, 2016, the former TRAB upheld the registration of the trademark in dispute, holding that the trademark in dispute and the reference trademarks are not similar marks used on similar goods. FAULHABER then brought the case to Beijing IP Court. The IP Court later held the goods on which the trademark certified to be used belong to an entire industrial machine while the goods on which the reference mark certified to be used are machine parts. These marks differ greatly in function, use, production department, sales channel, consumption target and the relevant public generally do not think that there is a specific association which is easy to cause confusion, so the trademark in dispute and the reference trademarks are not similar marks used on similar goods; the goods sold in China by FAULHABER before the registration date of the trademark in dispute are not the same or similar goods as the goods on which the trademark in dispute certified to be used , so the registration of the trademark in dispute does not violate Articles 32 and 15 of the Chinese Trademark Law. In this connection, the trial Court rejected FAULHABER's claims on November 26, 2018.

FAULHABER refused to buy the first- instance judgment and then appealed to Beijing High People's Court. Beijing High held that the goods on which the trademark in dispute certified to be used are the same or have certain association with the goods on which the reference trademarks are certified to be used in terms of function, use, production department. Meanwhile, taking into account the similarity of the trademark in dispute and the reference trademarks and that there is a business relationship between FAULHABER and ASIMEN before the registration of the trademark in dispute, the subjective intention of registering the trademark in dispute cannot be regarded as justified. If the trademark in dispute and the reference trademarks are allowed to co-exist in the marketplace, the relevant public may easily confuse the source of the goods, so these marks constituted similar trademarks used on similar goods. In this connection, Beijing High revoked the first- instance judgment and the original TRAB decision.

Source: China IP News