Beijing High Awards VOLVO Well-known Mark, Upending Free Rider
VOLVO is a well-known automobile brand from Sweden. After finding a Shenzhen- based telecom company's VOVO trademark similar to its own, the Swedish company waged a nullity war.
According to a recent decision made by Beijing High People's Court, Shenzhen Lingjuli Communication Technology Company's No.10443545 VOVO trademark (the trademark in dispute ) is found similar with VOLVO's No.1981782 VOLVO, No.5102989 VOLVO and its figure (the cited trademarks) when used on the same or similar products. In this connection, the Court rejected Lingjuli's appeal, and upheld the decision invalidating the registration of the trademark in dispute made by the Trademark Review and Adjudication Board (TRAB) under former State Administration of Industry and Commerce.
According to files, Lingjuli filed the application for registration of the trademark in dispute on January 19, 2012, requesting certified to be used on Class 9 products including notebooks and other products.
On June 2, 2016, VOLVO lodged an invalidation request to the former TRAB asserting that the trademark in dispute is similar with the cited trademarks while being used on the same or similar products. On December 30, 2016, TRAB nullified the trademark in dispute.
Lingjuli then brought the case to Beijing IP Court, arguing that there is no similarity between the contending marks for differences in character combination and pronunciation. In addition, the cited trademarks have not been used actually by VOLVO on certified products, therefore the registration of the trademark in dispute would not cause confusion among the relevant public.
Beijing IP Court held that there exist significant differences between the trademark in dispute and the cited trademarks in overall visual effects, so similarity was not constituted. In parallel, the evidence showed that although VOLVO had enjoyed high reputation on automobiles, VOLVO had not yet used the cited trademarks on certified products. So the relevant public would distinguish between them because they had already known the VOLVO mark. In this connection, the Court revoked the decision made by the TRAB, and ordered it to make a de novo decision.
The disgruntled VOLVO then appealed to Beijing High People's Court. After hearing, the appellate court held that the trademark in dispute and the cited trademarks only differ by one measly letter, while they also are similar in character combination and pronunciation. So the similarity was constituted under the general examination standard. The court of the first instance ruled that VOLVO mark enjoyed high reputation on automobile products. Conversely, the IP Court held the relevant public may distinguish between the trademark in dispute and the cited trademarks. This is the wrong application of the established examination rules and shall be rectified. In this connection, Beijing High made the decision in favor of VOLVO.
Source: China IP News