Puma won a trademark dispute in China

Puma won a trademark dispute in China. The case at hand concerns the following registered trademark by Ningbo Spark Motor Co., Ltd. in 2005 for class 7 – mechanical engines, gasoline and diesel generator sets, water pumps, washing machines, construction machinery, agricultural machinery, etc.:

The Chinese characters “彪马” (BIAO MA) within the mark mean Puma in translation.

Puma initiated an invalidation proceeding against this mark based on early registered trademarks Puma for class 25 clothes, shoes etc.

The Patent Office dismissed the invalidation finding both marks dissimilar for completely different goods and target consumers.

In the appeal, the Court upheld this conclusion stating that there is no possibility for a consumer confusion even though the submitted evidence that Puma is a well-known trademark.

A new appeal followed and this time the Beijing Hight Court overturned the court of first instance decision. According to the Court in the case at hand the registered later mark was against article 13.3 of the China Trademark Law or the so-called “well-known mark dilution”. This means that the later mark takes advantages from the reputation of the earlier mark even for dissimilar goods weaken its distinctive quality.

This decision is interesting and contrast significantly with the General Court of the EU recent decision where Puma lost the case against figurative mark for class 7.

Source: CCPIT Patent & Trademark Law Office – Ling Zhao and Lan Zhou за Lexology.

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