Canadian Company Regains Revoked TM
Beijing High People's Court recently made a judgment on a case regarding reexamination of No.19391647 Bio- K PLUS trademark and its figure (trademark in question), ruling that the trademark question, owned by the Canada-based BoouKepulaite International Company, is not similar with No.11300843 BLOK trademark(No.1 cited trademark) when used on the same or similar product.
The trademark in question was filed for registration by BoouKepulaisi on March 23, 2016. After examination, the former State Administration for Industry and Commerce rejected the application as the trademark in question is similar with the No.1 cited trademark, No.G701386 PLUS and its figure (No.2 cited trademark),
No.5712432 PLUS (No.3 cited trademark) when used on the same or similar product.
Disgruntled with the ruling, the Canadian company then launched a reexamination request to the former Trademark Review and Adjudication Board (TRAB) on January 9, 2017.
After examination, the former TRAB held that the products on which the trademark in question certified to be used belong to the same or similar products with the three cited trademarks. One of the distinctive characters of the trademark question, "PLUS", is similar with the No.1 cited trademark "BLOK" in terms of text composition and calling. In parallel, it is also similar with the distinctive characters of No.2 cited trademark PLUS and the No.3 cited trademark PLUS in terms of text composition and calling. Accordingly, the former TRAB decided not to register the trademark in dispute.
The Canadian company refused to just live with the unsavory result and brought the case to the Beijing IP Court, but would only experience frustration again. It then sought the last resort at the Beijing High People's Court, and submitted to the Court a notarized consent issued by Germany's Merck &Company, owner of the No.1 cited trademark, evidencing that Merck greenlighted BoouKepulaisi's registration of the trademark in question in China.
The Court held that the trademark in question and No.1 cited trademark are not similar, and the right owner of the No.1 cited trademark consented the application of the trademark in question. As the No.2 cited trademark has already been revoked by right owner, it is no longer an obstacle as a prior right for damning the trademark in question. The trademark in question and the No.3 cited trademark have obvious differences in word composition, calling, meaning and appearance, so they are not similar. Accordingly, the Court rejected the first- instance ruling and the former TRAB appeal, and ordered the China National Intellectual Property Administration, which inherited the former TRAB's functions, to make a de novo decision.