Beijing High awards Rolls-Royce well-known trademark, denying local company's registration in other class

文章来源: CHINA INTELLECTUAL PROPERTY NEWS
发布时间: 2020/7/1 14:15:00

  Rolls-Royce had a rift with a Chinese company over a劳狮莱狮trademark, pronounced similarly with the world-renowned car brand. Recently, Beijing High People's Court (Beijing High) made its final judgment, holding that No.4979295 trademark 劳斯莱斯(the cited trademark) (Note: official Chinese translation of Rolls-Royce) owned by the British company Rolls-Royce Motor Cars Limited is well-known for its use on cars and No.9391178 trademark 劳狮莱狮 (the trademark in dispute) owned by Tiewang Industry and Trade Company in Yongkang City, Zhejiang Province, constitutes imitation of the cited trademark. The registration of the trademark in dispute may  cause damages to Rolls-Royce's interests.

 

  The trademark in dispute was filed for registration by Tiewang Company and would be certified to be used on Class 19 goods including ceramic tiles, floors, marbles, architectural glass and non-metallic building materials in July, 2015. Rolls-Royce lodged an invalidation request to the Trademark Review and Adjudication Board (TRAB) under the former State Administration of Industry and Commerce in September, 2015, asserting that the cited trademark had been famous for its use on cars prior to the registration date of the trademark in dispute. The trademark in dispute is similar with the cited trademark on similar goods and its registration may confuse the public, prejudicing the company's interests.

 

  The former TRAB upheld the trademark in dispute. The disgruntled Rolls-Royce then brought the case to Beijing IP Court.

 

  Beijing IP Court rebuffed the decision made by the former TRAB and ordered the China National Intellectual Property Administration (CNIPA), the current higher-up of the TRAB, to make a de novo one.

 

  CNIPA then appealed to Beijing High, claiming that the evidence Rolls-Royce submitted can neither fully reflect the range, economic indicator, advertisement scope and investment and market value ranking of the goods such as cars the cited trademark was certified to be used on in China, nor prove the cited trademark is familiar to the relevant public through widespread promotion and use prior the registration date of the trademark in dispute. There exist obvious differences in functions and uses, sales channels, locations and target consumers between the two kinds of goods the trademark in dispute and the cited trademark respectively being certified to be used on. The relevant public may hardly think there are some specific relations between the two kinds of goods. The trademark in dispute will not confuse the public and damage the interests of Rolls-Royce even if the cited trademark is well-known.

 

  Beijing High held that the evidence submitted by Rolls-Royce can prove the cited trademark has been famous in China through mass sales, heavy use and widespread promotion for a long time prior to the registration date of the trademark in dispute. The cited trademark is well-known for its use on cars. In parallel, the trademark in dispute is similar with the cited trademark in word combination, pronunciation and overall visual effect. Considering that the cited trademark is distinctive, Tiewang Company should have known its popularity. The trademark in dispute constitutes the imitation of the cited trademark and its registration may confuse the public and impair the distinctiveness of the well-known trademark, causing damage to Rolls-Royce's interests. In the connection, Beijing High declined CNIPA's request and upheld the trial court's judgment.(by Wang Guohao)

 

  Editor Jiang Shuo)

 

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