Recently, Beijing Higher People's Court made the final decision in favor of German ZF Sachs AG (hereinafter as “ZF Sachs AG”) against a Zhejiang-based Yuhuan Boge Rubber Co. Ltd (hereinafter as “Yuhuan Company”) for trademark similarity dispute. This concluded an 11-year trademark battle between the two companies.
The court denied the trademark registration of “BOGE” by Yuhuan Company due to its similarity with registered trademark “BOGE” of ZF Sachs AG. in function, use and targetted customer. Therefore it is more likely to mislead the relevant public as to the source of goods.
Yuhuan Fangdi Industrial Machinery Co. Ltd. filed for trademark registration of No. 1692088 for BOGE in class 17, covering goods of rubber shock absorber and rubber shock absorbing buffers on October, 2001. The trademark was then transferred to Yuhuan Company in 2010. Upon publication, ZF Sachs AG challenged the trademark and sought for rejection of registration.
ZF Sachs AG alleged that “BOGE” is a meaningless word created by their company and has high distinguishing characteristics. Moreover the trademark of No. 160602 for “BOGE” has been registered in class 7 covering goods of shock eliminator and dual shock eliminator in China in 1982 and has been used in China for many years. Yuhuan Company should have known "BOGE" brand and the act of deliberate registration of the alleged trademark should be rejected.
During the first and second instance,, the courts held that the opposed trademark is identical to ZF Sachs AG’s trademark in function, use and targeted customer. It is more likely to mislead the relevant public that they are associated with each other.
The courts also found that the “BOGE” trademark has been registered by ZF Sachs earlier than Yuhuan Company and has gained popularity among the consumers. Finally the court rejected the trademark registration of “BOGE” by Yuhuan Company.
