| Disputed Mark Reg. No. 19502292 |
Cited Mark 1 Reg. No. 71092 |
Cited Mark 2 Reg. No. G1037620 |
Cited Mark 3 Reg. No. 3336263 |
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The Beijing High Court recently concluded an administrative trademark invalidation dispute between the appellant Tianjin Jiuhong Bicycle Co., Ltd., ("Jiuhong"), the CNIPA, and Adidas Co., Ltd. ("Adidas"). The appeal was dismissed, and the first instance court judgment upheld.
The issue in this case is whether the Disputed Mark violated Article 13, Paragraph 3 of the 2014 Trademark Law. The court found that: based on the evidence in the case, it can be proved that the Cited Mark 1 has been widely known to the public on clothing and other goods before the Disputed Mark's application date and constituted a well-known mark. According to the need-based determination principle of well-known marks, the courts will only determine whether a trademark is well-known when it is really necessary. This court has protected the rights and interests of Adidas by affirming that the Cited Mark 1 is a well-known mark, and will not comment on whether the Cited Marks 2 and 3 constituted well-known trademarks.
The Disputed Mark is composed of English letters "qdidas", the Cited Mark 1 is a word trademark composed of uppercase English "ADIDAS". The Disputed Mark and the Cited Mark 1 are relatively similar in terms of word composition, pronunciation, meaning, appearance, etc. It constituted a copy or imitation of the Cited Mark 1. Although "bicycle; trolley" and other goods approved for use under the Disputed Mark and "clothes" goods for which the Cited Mark is well-known are not similar goods according to the CNIPA Goods and Services Classification, they overlap in terms of sales channels and consumer groups, which belong to goods with a high degree of correlation. Considering factors such as the distinctiveness and popularity of the Cited Mark 1 and the degree of imitation of the Disputed Mark, the use of the Disputed Mark on "bicycles; trolleys" and other goods was likely to cause the relevant public mistakenly believe that the Disputed Mark and the Cited Mark have a certain degree of connection, thereby weakening the distinctiveness of each Cited Mark, improperly using the market reputation of the Cited Marks, and causing the interests of Adidas to be affected and damaged. Therefore, the first instance judgment and the sued ruling determined that the registration of the Disputed Mark violated the provisions of Article 13, Paragraph 3 of the 2014 Trademark Law was not wrong, and this court affirmed. The relevant grounds of appeal of Jiuhong cannot be established and should not be supported.
Originally published 24 May 2023.
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