Recently, Beijing No. 1 Intermediate People’s Court made a first instance decision in favor of the Walt Disney Company(hereinafter as “Disney Co.”), which affirmed the ruling of the Trademark Review and Adjudication Board(TRAB) and rejected the registration of No. 3915462 trademark “威尼熊” applied by Ling Xiu Hong Ri knitted clothing factory (hereinafter as LXHR) in Fujian, China.
In 2004, LXHR applied for registration of No. 3915462 trademark “威尼熊” on Class 25 covering goods of clothes and hats, etc. Disney Co. filed an application for revocation of the No. 3915462 trademark before TRAB. Disney Co. claimed that the disputed trademark was similar to their No. 2018292 trademark "WINNIE THE POOH" on Class 25 used on clothes, hats and so on.
After examination TRAB held that the disputed trademark and the cited trademark are similar trademarks covering identical goods, and therefore approved revocation of the trademark “威尼熊”. LXHR then appealed the case before the Beijing No. 1 Intermediate People’s Court.
After review, the court held that, the cited trademark, “WINNIE THE POOH” had been used by Disney Co. for years before the registration of the disputed trademark. And “小熊维尼” had become the generally recognized Chinese translation for “WINNIE THE POOH”. The disputed trademark “威尼熊” and “小熊维尼” were similar both in sound and meaning, and the coexistence of the two marks would cause confusion among the consumers. Therefore, the court affirmed the decision of TRAB and held that the registration of the disputed trademark should be removed.
