In 2004, the Chinese Trademark Office ("CTO") decided that BMW's opposition proceedings regarding an application by Jiangxi Machinery to register "BMWCO" for "motorcycles", were without grounds. BMW appealed this decision to the Trademark Review and Adjudication Bureau ("TRAB") and in early 2009, the TRAB issued its decision upholding the original decision of the CTO. BMW then appealed to the First Intermediate Court of Beijing, claiming that the TRAB and CTO erred in deciding that BMW and BMWCO were not similar in appearance and confusion was unlikely. In a surprising decision, the court concluded that the goods involved were indeed the same or similar, but that the marks were not so similar that confusion was likely – the court upheld the decision of the TRAB and ordered that the application for BMWCO be permitted to register for motorcycles. This decision highlights two issues – (i) the importance of providing extensive and well thought out submissions and evidence to the TRAB and courts regarding marks being similar, the meaning of the marks and the likelihood of confusion (we note that survey evidence can often be very useful in China) and (ii) the need for foreign companies to consider filing defensive registrations in China, in both English and Chinese characters – we are starting to see the TRAB and courts, take a very narrow view as to whether a mark is similar or not, to another mark, even in the case of well known marks, like BMW or Apple. The intelligent registration of defensive marks will allow a company's central marks to be protected with relative ease.
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