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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A UK trademark dispute over “FIT KITCHEN”

One interesting trademark dispute from the UK gives us some valuable insights about the UK practice and legislation subtleties when it comes to trademark invalidation.

In the case at hand Fit Kitchen Limited is the owner of the registered FIT KITCHEN trademark used for website food delivery services.

Another UK company Scratch Meals started to use the same mark for ready meals distributed to supermarkets.

A lawsuit followed. The Scratch Meals defense position was that there is no trademark infringement because the earlier mark was registered in bad faith. The argument for this was the fact that Fit Kitchen Limited applied for the mark six days before to be dissolved as a company.

Fit Kitchen Limited, however, proved that they weren’t aware of that fact because they didn’t receive the official notice for this. What’s more immediately after being informed they applied to restore the company.

Scratch Meals than claimed that in a case where a trademark was filed by a dissolved company it has to be owned by the Crown.

However, the court dismissed this claim because it wasn’t stating initially.

Finally the court considered that the earlier mark wasn’t filed in bad faith. From that point of view the mark was valid and taking into account that it was identical to the later mark, for identical and similar goods and services, there was a trademark infringement.

One strong point for this conclusion was evidence submitted by Fit Kitchen Limited for consumers who were confused between both brands in the market.

This case shows clearly how important is a preliminary trademark clearance search. The search has to be done before the relevant brand is launched in order for any legal conflicts to be avoided.

If you are interested to learn how you can conduct such searches on your own, check this Udemy course – Complete course on trademark search, for example.

Source: Simon Bennett and Scott Steinberg – Fox Williams LLP for Lexology.

“BOND GIRL” cannot be owned by others even written in Japanese

The Japanese Patent Office has ruled in a dispute regarding a registered trademark for “BOND GIRL” written in a Japanese katakana character, for class 41 – arranging, conducting, and organization of seminars.

Against this mark an application for invalidation was filed by Danjaq, LLC as a holder of copyrights over characters from the well-known movies for James Bond.

According to Danjaq, LLC, the registered mark takes advantages of the popular character from the James Bond movies “BOND GIRL”.

The Patent Office invalidated the marks agreeing that the consumers in the country have been aware with this character since 1962. Apart from this “BOND GIRL” was used in many advertising and merchandising campaigns for which licenses were been given from the holder of the copyright.

What is interesting here is that the basis for the invalidation wasn’t confusion regarding the source of origin but a likelihood the mark to cause damage to public order or morality from registration.

Source: Masaki Mikami

Bridgestone won a trademark dispute in Japan

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The Japan Patent Office has ruled in a case for invalidation of the SB NAGAMOCHI trademark registered for the goods in class 12: non-electric prime movers for land vehicles, not including their parts; AC motors or DC motors for land vehicles, not including their parts; automobiles and their parts and fittings; two-wheeled motor vehicles, bicycles and their parts and fittings; adhesive rubber patches for repairing tubes or tires.

The invalidation request was submitted by Bridgestone based on an earlier trademark with reputation B for tires. According to the company the later mark could create consumer confusion and take advantages of the well-known status of the B mark.

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Different pieces of evidence were submitted to prove this status. For example, Bridgestone holds 14.6% market share for automobiles tires in the world, and 55.9% in Japan. The company have been using its mark for a myriad of advertising and promotional campaigns for many years including for sponsorship of Olympic games.

This created a strong reputation among the consumers in the country which can be mislead when seeing the SB NAGAMOCHI mark.

The Patent Office agreed and invalidated the later mark.

Source: Masaki MIKAMI