Dissatisfied with the ruling of the Trademark Review and Adjudication Board (TRAB) under the State Administration for Industry and Commerce (SAIC) for approval of registration of No. 1982802 “宝马先锋” trademark by Wenzhou Baoma Electric Co., Ltd (hereinafter refers to as Wenzhou Baoma), the famous Germany auto manufacturer, BMW AG (hereinafter refers to as BMW) appealed the decision before the Beijing No.1 Intermediate Court. The court heard the case recently.
Wenzhou Baoma applied for No. 1982802 trademark of “宝马先锋”, certified to be used on Class 9, the good of switch and socket. BMW first applied for an opposition before the TRAB against the registration of the mark “宝马先锋”, arguing that its registered trademark “宝马” has been identified as well-known trademark on class 12 for vehicle. BMW alleged that the Wenzhou Baoma’s marks contained the Chinese word “宝马” and the classes of goods are affiliated with each other. BMW argued that the use of “宝马先锋” may, when used in the market, confuse the consumers and dilute the distinctiveness of the mark “宝马” . Therefore, the mark “宝马先锋” should not be approved for registration.
Before the court, TRAB held that “宝马先锋” trademark was used on electric switch and socket, therefore the class of goods was evidently distinctive from that used on BMW’s mark in terms of function, use, and sales channels. Even though “宝马” trademark had a high reputation, the relevant public would not confuse the two marks. In addition, “宝马” was an existing Chinese word which was not originally created by BMW. Therefore, the trademark of "宝马先锋" should not infringe BMW’s mark.
As of now, the court has not yet rendered a ruling.
