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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