Court Rules Alleged Trademark's Used on Dissimilar Products


Seven years is what it took for the U.S.- based Tea Forte Companyto go toe- to- toe with Shanghai Difute (Note: Same spelling with Tea Forte in Chinese) Tea Company overa trademark and the persistence of the U.S. company failed to pay off. Recently, Beijing High People’s Court rejected the appeal of Tea Forte and upheld the judgment of the first instance. The Trademark Office (TMO) under the State Administration for Industry and Commerce would clear the registration of No.7863542 figure trademark accordingly. The trademark in question was filed by Shanghai Difute for registration on November 26, 2009, certified to be used on Class 30 products including flour and condiment. On November 6, 2010, TMO made the preliminary examination and published the trademark in dispute.


On January 25, 2011, Tea Forte lodged an opposition application to TMO, claiming that the trademark in dispute constituted similarity with No.5914681 figure trademark and No.5914683 'F and figure' trademark, and No.5914845 'F and figure' trademark and No.956073 figure trademark on similar products. In parallel, the trademark in dispute infringed the prior copyright of cited trademark. The trademark in dispute shall not be registered and refrain from using as Difute filed the trademark in question under its own name and without permission from Tea Forte, considering it was in business with the U.S. company.


After examination, TMO made a decision to approve the registration of the trademark in dispute. Tea Forte filed a review application to Trademark Review and Adjudication Board (TRAB) which would also greenlight the registration. The disgruntled Tea Forte then brought the case to Beijing No.1 Intermediate People's Court. The court held that the trademark in dispute neither constituted similarity with cited trademark used on similar products, nor infringed the prior copyright of Tea Forte. In parallel, Tea Forte failed to prove that agency relationship was entrusted between the two sides.


After the appeal was rejected by Beijing No.1 Intermediate People's Court, Tea Forte then brought the case to Beijing High People's Court. Beijing High held that it did not constitute similarity between flour, condiment and tea and tea bag, so the registration of trademark in dispute should maintain.


Accordingly, Beijing High made the final judgment to reject the appeal from Tea Forte and upheld the decision of the first instance.

 

By Wang Guohao

SOURCE: China Intellectual property news CIPRN