Zhang Chongwei, the legal representative of Shandong Baoma Clothing Co., Ltd., wanted to apply for registration of “Baomachidu” trademark on clothing and other goods, leading to the objection by BMW AG (hereinafter referred to BMW).
After the Trademark Review and Adjudication Board (TRAB) under State Administration for Industry and Commerce made the decision that the trademark was not approved for registration, Zhang Chongwei filed an administrative lawsuit to the Beijing No.1 Intermediate People's Court. Recently, the first instance of the court maintained the decision by TRAB.
Actually, the questioned No.5154519 Baomachidu trademark was applied by Zhang Chongwei in February, 2006, for using on class 25 for clothing, underwear and shirt.
Then, BMW held that, the questioned trademark was similar or the same to its earlier applied “BMW” trademark and “BMW and figure” trademark, so BMW lodged an opposition within the statutory period. When its opposition was rejected, BMW applied re-examination to TRAB.
BMW held that, its “宝马”,“BMW” and “BMW and figure” trademark enjoyed high visibility, and had become well-known trademarks of Class 12 on cars and other goods. The questioned trademark was not only used on the same or similar goods of similar marks with three cited trademarks , but also constitutes a malicious imitation to well-known trademark BMW, which could cause consumers’ confusion on a registered trademark. In addition, the questioned trademark caused infringement to the previous right of BMW, and constitutes unfair competition.
It is reported that, the first cited “BMW” trademark was No. 663925 , an internationally registered trademark; the second cited No.673219 trademark was the internationally registered “BMW and figure” trademark; the third cited trademark was No. 2019284 “宝马” trademark. These three trademarks are approved on class 25 for clothing, shoes, hats and other merchandise, owned by BMW.
After TRAB made the decision that the questioned trademark was not approved for registration, Zhang Chongwei filed an administrative lawsuit to the Beijing No.1 Intermediate People's Court. Zhang Chongwei alleged that the questioned trademark was its own unique-created trademark, and were not similar trademarks to three cited trademarks, and the applying for registration had no damage to the earlier trade name rights of BMW.
The court held that, the“宝马”trademark mastered by BMW had become correspondence with “BMW” trademark. The questioned trademark completely contained a “宝马”, and if coexisting on clothing and other goods with cited trademarks, it would easily lead to consumers’ confusion , which constituted the using the same or similar goods on similar trademarks. In addition, since BMW's previously registered“宝马” had a certain reputation, the registration of questioned trademark had a damage to the earlier trade name rights of BMW.