Renault's Chinese design patent No. ZL202130363449.5 for their MOBILIZE vehicles was invalidated by CNIPA on August 2, 2022 on the basis of conflicting with other's prior trademark right.
Chinese auto maker "Human Horizon" requested CNIPA to
invalidate this design patent. Human Horizon owns a Chinese car
brand "HiPhi" and owns a Chinese trademark No.33004007
in class 12 with approved goods
including vehicles. This trademark, being used on HiPhi cars, was
registered on December 7, 2019 and remains valid until December 6,
2029.
Renault's design application No. 202130363449.5 was filed on
June 11, 2021. As shown in the drawings of this design patent, the
logo is used in the center of each
wheel and on the rear side of the trunk.
CNIPA is of the opinion that in Renault's logo and Human Horizon's trademark
both give the relevant public the overall
impression of a line segment being in the center and separating a
bracket. In addition, the angle of the pattern varies depending on
the viewing angle. Therefore, CNIPA found that
is similar to
and the use of a pattern similar to a
registered trademark on goods of same class constitute conflict of
prior trademark right. According to Article 23.3 of China Patent
Law, any design for which a patent right is granted must not
conflict with the lawful rights acquired by any other person before
the filing date. Therefore, CNIPA declared Renault's
Chinese design patent ZL202130363449.5 invalid.
is a logo Renault uses for its
MOBILIZE vehicles. Renault and Human Horizon had trademark disputes
over the similarity between
and
in Germany in 2021. A German court decided
that
and
are not similar. However, Renault's
Chinese trademark application for
has been rejected by CNIPA. In hindsight, it
would have been prudent for Renault to avoid including the logo
in the design drawings, as it is
well aware of the Human Horizon's position in enforcing its own
trademark
.
Generally speaking, applicants for design rights and their attorneys need to evaluate whether it is a good practice to include any trademark in the drawings of a design application. Unless the use of a trademark has significant contribution to the overall visual effect of the design instead of merely serving the function of a trademark, it is best not to include any trademark in the drawings of a design application, to avoid potential risks of trademark disputes.
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