Recently, the Beijing High People's Court wrapped up the trademark dispute between Rolls-Royce Motor Cars and Guangdong Konbom Technology & Industrial Company with its final-instance judgment, holding that some of Konbom Company's registered trademarks No.14355333 and No.14355334 保劳斯, No.14355335 and No.14355336 保莱斯, No.14355337 and No.14355338 宝劳斯and No.14355339 and No.14355340 宝莱 斯 (trademarks in dispute) and the well-known trademark No.4979295 劳斯莱斯 (the cited trademark) (i.e., the official Chinese translation of 'Rolls-Royce') constituted similarity on the same or similar goods. Further, the court held that the trademarks in dispute prejudiced the interests of Rolls-Royce as the owner of the well-known trademark. Therefore, the decision to uphold the trademarks in dispute made by the Trademark Review and Adjudication Board (TRAB) of the former State Administration for Industry and Commerce (SAIC) was revoked and it needed to make a de novo one.
Trademarks in dispute were filed for registration by Konbom in April 2014, and would be certified for use on goods such as cars and car tyres in 2016.
Rolls-Royce lodged an invalidation request with the TRAB, alleging that the cited trademark had been well-known to the public before the filing date of the trademarks in dispute, enabling its establishment as a well-known trademark. They further maintained that the trademarks in dispute constituted similarity on the same or similar goods with the cited trademark and may confuse the public, causing prejudice to the company's interests.
TRAB held that the evidence proved that the cited trademark enjoyed a high reputation before the filing date of the trademarks in dispute. Considering the differences in character formation and pronunciation, the trademarks in dispute did not constitute reproduction and imitation of the cited trademark. In addition, goods such as the adhesives for tyres attached with the trademarks in dispute were different from the goods such as cars attached with the cited trademark in terms of function and usage. Registration and use of the trademarks in dispute had not confused the relevant public. Therefore, the TRAB upheld the trademarks in dispute.
The disgruntled Rolls-Royce then brought the case to the Beijing IP Court.
The Beijing IP Court held that the trademarks in dispute, approved to be used on goods such as car tyres, constituted similarity on the same or similar goods with the cited trademark when used on car tyres. The interests of Rolls-Royce as the owner of the well-known trademark would be harmed though trademarks in dispute did not constitute similarity on the same or similar goods when used on adhesives for tyres. Accordingly, the IP Court rebuffed the decision made by the TRAB at the first instance and ordered it to make a new one.
The TRAB then appealed to the Beijing High People's Court. After hearing, Beijing High held that the IP Court ascertained the facts clearly and applied the law correctly and upheld the first-instance ruling accordingly.
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