Michelin weeds off squatted TM after roller-coaster litigation battles

发布时间: 2021/1/20 10:28:00

  One is a renowned France-based tire manufacturer, and the opposition is a buyer of raw materials of Chinese medicines and agricultural products from Anhui, both engaging in a fierce, lengthy dispute over the "美其淋" trademark used on beverages.

  Recently, the dispute is finally nearing the end. Beijing High People's Court made a final judgment, ruling for Michelin Group. The Court held that No.136402 "MICHELIN" trademark (cited trademark 1) owned by Michelin has become a well-known mark on tire goods before No.12963409 "美其淋" trademark (trademark in dispute) was registered by Sihai Pharmaceutical Co., Ltd. from Bozhou, Anhui Province. The registration and use of the trademark in dispute had corrupted the close association between the "MICHELIN" trademark and tire goods supplied by Michelin, weakening the distinctiveness of the cited trademark 1, which consequently may damage Michelin's interests. In this connection, the Court revoked the ruling of upholding the registration of trademark in dispute made by the Trademark Review and Adjudication Board (TRAB) under the former State Administration for Industry and Commerce (SAIC)。

  Sihai, registered as a business in 2002, mainly engaged in procurement of Chinese medicine materials and agricultural products. On July 23, 2013, the company filed for registration of the trademark in dispute, which would be certified to be used on Class 32 goods including beer, juice, soda, soy beverage on May 14, 2016.

  On April 25, 2017, Michelin lodged an invalidation request over the trademark in dispute to the TRAB, asserting that before the trademark in dispute's application for registration, its cited trademark 1 and No. 519749 "米其林" trademark (cited trademark 2) had gained sufficient reputation in tires to be awarded a well-known mark status. The trademark in dispute had copied the two cited trademarks, which may easily cause confusion over the source of the goods among the public, dilute the distinctiveness of the cited trademarks and damage Michelin's interests.

  However, the TRAB did not see it that way, holding that the registration and use of the trademark in dispute would not mislead consumers about the source of the goods.

  Disgruntled with TRAB's ruling, Michelin then brought the case to Beijing IP Court.

  However, Beijing IP Court rejected Michelin's appeal in the first instance, holding that there exist distinctive differences in word composition between the trademark in dispute and the cited trademark 1's Chinese translation, the cited trademark 2's logo. Therefore, their coexistence in the market would not mislead the public and harm Michelin's interests, nor weaken the distinctiveness of the cited trademarks.

  Unwilling to call it a day, Michelin appealed to Beijing High.

  Luckily, Michelin's efforts got paid off. Beijing High held that the evidence submitted by Michelin can prove the cited trademark 1 has been promoted and used for an extended period of time in China with a high reputation among the relevant public before the registration of the trademark in dispute. The trademark in dispute "美其淋" is similar to the cited trademark "MICHELIN" in terms of calling and pronunciation, which constitutes the translation of the cited trademark 1. Consumers would easily establish an association between the trademark in dispute and the cited trademark 1 when seeing the trademark in dispute used on beverage goods, which corrupts the close relationship between the cited trademark 1 and Michelin's tire goods, dilutes the distinctiveness of the cited trademark 1 and may harm Michelin's interests. In summary, the Court overruled the clecision and the ruling made by the TRAB, ordering China National Intellectual Property Administration (CNIPA) to take a de novo look at the invalidation request over the trademark in dispute. (by Wang Jing)

(Editor Li Xingyi)

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