The world’s most famous electric vehicle manufacturer TESLA has initiated a lawsuit in China against the local company Sino Drinks Food Company for infringement of trademark TESLA and the following figurative mark:
Sino Drinks Food Company offers beer and liqueur under a similar name TESILIA and a similar figurative sign.
Most likely the grounds for the dispute will be a trademark with reputation and unfair competition because Tesla does not have a registered mark for alcohol in China. As far as it is known this Chinese company has registered about 200 other trademarks that imitate famous signs.
WIPO reports about the accession of China to the Hague System for the International Registration of Industrial Designs.
As it is well known, Hague System allows up to 100 designs to be included in one application and after that registered in 90 Member states. This saves a lot of time and money for the applicants.
The Agreement will come into force for China on 05.05.2022, after this date the country can be designated in applications for industrial designs.
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.
EUIPO reports about the addition of the China national trademark database to the global database TMView. In that way additional 32 million trademarks are accessible through TMView which now covers more than 96 million trademarks from around the world.
This is definitely a good news for every company that plans to enter the China market with own brand. Searching for earlier already registered trademarks is a key element when it comes to avoiding unnecessary trademark conflicts.
The US sportswear company New Balance has won an important lawsuit in China related to its trademark.
The case at hand concerns the Chinese company New Barlun that uses the letter N on shoes. This letter is a New Balance well-know trademark all over the world. However, New Barlun succeeded to registered the sign first in China.
The US company initiated a lawsuit seeking invalidation of the mark based on a bad faith registration that took advantages of the New Balance’s trademark global reputation.
The court concurred with the US company finding bad faith approached by New Barlun, which was proven by the fact that the Chinese company failed to cease infringement despite the court issuing an interim injunction order.
The Court ordered $2.83 million in damages to New Balance for the trademark infringement. This is one of the biggest sum awarded by a Chinese court in case of trademark infringement in the field of sportswear.
Another indicative moment regarding this dispute is that trademark registration doesn’t mean a save harbor for the relevant applicant if the mark is registered in bad faith especially in light of worldwide well-known brands.
Huawei filed a trademark application in the UK for ‘Mind Studio’ in classes 9 and 42 – software development tools, computer software platforms for mobile devices, computer software management services, and the development of software applications.
Against this application an opposition was filed by the education company Minds Studio based on an early registered European trademark for Minds Studio in clauses 41 and 42 – design services; IT services; science and technology services; and testing, authentication, and quality control.
According to the Chinese company there was no similarity between the goods and services of both signs because they target different consumer groups.
The Patent Office disagreed. First of all, the Office considered both marks as highly similar almost identical. The difference of only one letter “s” at the end of the first word is not enough to overcome this conclusion.
As to the goods and services, the Office consider them similar and identical. They target the same consumers, distribution and trade channels.
In light of this it is possible a confusion to arise in the consumer mind regarding both signs. The opposition was upheld in its entirety.
Daren Tang officially become Director General of the World Intellectual Property Organization. He succeeds Francis Gurry in this position after tense election in the light of the economic and political conflict between the US and China.
Mr. Tang is a former Chief Executive of the Intellectual Property Office of Singapore and will serve as WIPO General Director for a mandate of six years.
INTELLECTUAL PROPERTY PLANET 