PUMA, known as Biao Ma (transliteration of PUMA 彪马in Chinese) in China, enjoys great popularity amongst Chinese consumers. Its trademark, which features a jumping puma cat and "PUMA" in capital letters, is distinctive and well-recognized by the public.
In 2016, Ningbo Spark Motor Co., Ltd. (hereinafter referred as Spark) registered a trademark consisted of Chinese characters "飚马", which is also pronounced as Biao Ma, capital letters "PUMAH" and the device of a leaping horse. The trademark is designated in class 7 for goods including mechanical engines, gasoline and diesel generator sets, water pumps, washing machines, construction machinery, agricultural machinery, etc.
Below please find the comparison of the marks involved:
Although the designated goods are completely different, considering the high similarity of the trademarks, PUMA initiated an invalidation in 2019 based on early registered trademark rights in Class 25, but the request was dismissed by the CNIPA due to the dissimilar goods and unlikelihood of misleading the public.
Puma appealed to the decision and provided further evidences to prove that it is a well-known trademark and cross-class protection should be granted. However, the Beijing IP Court again concluded that, although PUMA could prove its popularity as a trademark in clothing and footwear industry, due to the different goods and target consumers groups, confusion is unlikely to happen so Spark's disputed mark PUMAH shall be maintained.
PUMA further appealed before the Beijing High Court, and this time, it took its trophy home.
The High Court overturned the first instance decision and held that the disputed mark constitutes similar trademark with the cited trademarks in terms of composing elements, whole appearances as well as pronunciations. It also recognized the well-known status of PUMA's three cited trademarks.
The court concluded that the registration and use of the disputed mark should be considered as "well-known trademark dilution" as it takes advantage of the prior right holder's reputation and weakens its distinctive quality. PUMA's invalidation claim against the trademark "PUMAH" has finally been supported.
When the 2 marks are designated in different classes and the possibility of confusion is low, the recognition of well-known trademark is the key in the winning journey of trademark disputes such as opposition and invalidation because cross-class protection is granted to well-known trademarks.
- The case is a good example of active practice on Article 13.3 of China's Trademark Law.
- The final decision also shows that China's tolerance for 'knock-off' trademark applications is getting lower and lower. Trademark registrations that obviously imitate others' well-known trademarks will not be maintained even though the designated classes and goods are very different.
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