Court Supports Right Claim of John Deere, Denying Local TM Free Rider
Recently, Beijing High People's Court made a final judgment on the trademark dispute between the U.S.- based John Deere and Shandong Kaisideer Agriculture Equipment Co., Ltd. over No.9862638 trademark "ZHONGCEDEER" (trademark in dispute), and upheld both the first- instance judgment and the decision made by the Trademark Review and Adjudication Board (TRAB) under the former State Administration for Industry and Commerce, rendering the trademark in dispute invalid.
The trademark in dispute was filed for registration by Kaisideer on August 18, 2011, and would be approved to be used on Class 12 goods including minisized motor vehicle, truck, tractor and engine for land vehicle on October 21, 2012. John Deere lodged an invalidation request to TRAB on July 21, 2017, asserting that the trademark in dispute was similar to its previously registered trademarks "DEERE"" 迪 尔 ""JOHN DEERE""约翰·迪尔" (Note: official Chinese translation of John Deere) ( reference trademarks) while being used on the same or similar goods and infringed its prior trade name right. Kaisideer argued that the trademark in dispute neither constituted similarity with the reference trademarks nor infringed John Deere's prior trade name right. In addition, other trademarks comprised of the words "DEER" had been approved to be registered and the trademark in dispute can also coexist with the reference trademarks. On June 26, 2018, TRAB held that the trademark in dispute is similar to the reference trademarks while being used on the same or similar goods , infringing John Deere's prior trade name rights of " 约 翰·迪 尔 " and "JOHN DEERE". Accordingly, TRAB declared the trademark in dispute invalid. The disgruntled Kaisideer brought the case to Beijing IP Court, but would only experience frustration again. Kaisideer then appealed to Beijing High People's Court.
After hearing, Beijing High supported the first-instance ruling and TRAB's decision. In terms of Kaisideer's opinion that other trademarks comprised of the words "DEER" had been approved to be registered and the trademark in dispute can also coexist with the reference trademarks, Beijing High held that the examination of the trademark in dispute was affected by multiple factors including the background at the time and the relevant evidence. The application, examination and approval of other trademarks comprised of the words "DEER" has no necessary connection with this case and cannot be the factor to be considered in making a ruling. Besides, other trademarks comprised of the words "DEER" are not related to administrative litigation and cannot be regarded as the reason to decide whether the trademark in dispute should be registered. In this connection, Beijing High made the above judgment.
Source: China IP News