The dispute is between the Sweden-based VOLVO Trademark Holding AB and Volok Electrical Co,. Ltd in Zhejiang Province of China over the trademark VOLOK 沃尔科.
Recently, Beijing High People's court made a final judgment, held that No.9047759 trademark "VOLOK沃尔科 " (trademark in dispute) had constituted similarity with No.1981782 "VOLVO" (cited TM1) and No.4664260 "沃尔沃" (cited TM2) on the same or similar products. The judgment brought the 3- year- long dispute to an end and upheld the decision invalidating the trademark in dispute made by Trademark Review and Adjudication Board (TRAB).
The trademark in dispute was filed for registration by VOLOK in January 2011 and would later be certified for use on products including materials for electricity mains (wires, cables) and capacitors.
In July 2015, VOLVO filed an invalidation request to the TRAB. The cited TM1 and cited TM2 were filed by VOLVO in October 2001 and May 2005 respectively, and would be approved for registration in February 2003 and May 2008, certified for used on products including combustion instruments, wires, and capacitors.
In May 2016, the TRAB made a ruling that the registration and use of the trademark in dispute would not cause misunderstanding of the public in the quality and origin of the products, however, the trademark in dispute and the two cited TMs constituted similarity in the same or similar products. On this ground, TRAB decided to invalidate the trademark in dispute.
The disgruntled VOLOK then brought the case to Beijing IP Court.
After hearing, Beijing IP Court held that the trademark in dispute and the two cited TMs constituted similarity in the same or similar products. The court denied the request of VOLOK at the first stance.
Then VOLOK appealed to Beijing Higher People's Court. The Higher court held that the certified products of the trademark in dispute and the two cited TMs highly converged on function, use, distribution channel and customers, constituting similarity in the same or similar products.
The trademark in dispute and the two cited TMs were similar in overall design, words formation and calling, and it is hard to tell from the meaning. In addition, two cited TMs had enjoyed high popularity in vehicles and relevant instruments after long- time and wide use and promotion.
In this connection, Beijing High affirmed that the trademark in dispute and the two cited TMs constituted similarity in the same or similar products and rejected VOLOK.
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