NewsOn the April 8 morning, we learned from Beijing Court Trial Information Network that Yuan Qi Sen Lin won the second instance lawsuit of the trademark “燃” with No.35178063. The court of second instance annulled the decision of the first instance and the Decision of Review issued by the TRAB on Yuan Qi Sen Lin.
According to the disclosure of Beijing High People’s Court, on December 7, 2018, Yuan Qi Sen Lin applied for the trademark “燃” with No.35178063 and designated goods (class 30): coffee; tea; tea-based beverages; chamomile-based beverages; sugar; honey; sugar candy bird‘s nest; oatmeal; cereal-based snack food; rice-based snack food; instant rice; chips [cereal products]; convenience noodle; lobstesr slice; ice cream; frozen yoghurt [confectionery ices]; condiments (collectively referred to as review goods).
On November 2, 2017, Sichuan Jinshan Food Co., Ltd. applied for the trademark No. 27247874.
On October 12, 2018, Mengniu Dairy Co., Ltd. applied for the trademark No.34010242, No.34010188, No.34007897 and No.34005718.
(Ⅳ) Cited trademark 6
1. Registrant: Inner Mongolia Mengniu Dairy (Group) Co. Ltd
2. Registration No.: 34010242
3. Application date: October 12, 2018
4. Mark:
5. Designated goods (Class 32): Beer; Non-alcoholic fruit juice beverages; Whey beverages; Soda water; Soft drinks; Waters [beverages]; Vegetable drink; Soy-based beverages [not milk substitutes]; Bean juice; Beverage ingredients.
(Ⅵ) Cited trademark 8
1. Registrant: Inner Mongolia Mengniu Dairy (Group) Co. Ltd
2. Registration No.: 34010188
3. Application date: October 12, 2018
4. Mark:
5. Designated goods (Class 29): Meat; Edible birds' nests; Seaweed extracts for food; Fruit-based snack food; Potato flakes; Milk beverages [milk predominating]; Sausage casings, natural or artificial.
(Ⅶ) Cited trademark 9
1. Registrant: Inner Mongolia Mengniu Dairy (Group) Co. Ltd
2. Registration No.: 34007897
3. Application date: October 12, 2018
4. Mark:
5. Designated goods (Class 30): Coffee-based beverages; Malted milk; Powders for making ice cream; Ice pops; Water ice; Ice-cream brick; Salt for preserving foodstuffs; Leaven; Essences for foodstuffs, except etheric essences and essential oils; Gluten prepared as foodstuff.
(Ⅷ) Cited trademark 10]
1. Registrant: Inner Mongolia Mengniu Dairy (Group) Co. Ltd
2. Registration No.: 34005718
3. Application date: October 12, 2018
4. Mark:
5. Designated goods (Class 5) : Medicinal drinks; Collagen for medical purposes; Mineral waters for medical purposes; Infant formula; Cotton sticks for medical purposes; Preparations to facilitate teething; Pesticides.
Source: Beijing Court Trial Information Network
In the first instance, the court held that the disputed trademark and a number of cited trademarks, including the Mengniu Dairy application are the same or have greater relevance in the function, use, consumption channel and consumption object of the goods, and constitute the same or similar goods within the designated or approved scope of use.
At the same time, the word’s composition of the disputed trademark “燃” is the same as that of the cited trademarks, which constitute similar trademarks. If the disputed trademark and the above cited trademarks coexist in the market, it will easily lead to confusion and misunderstanding of the source of the goods by the relevant public, which has constituted similar trademarks used on the same or similar goods.
But Yuan Qi Sen Lin dissatisfied the first instance judgment. It is mentioned that some of the cited trademarks of Mengniu Dairy, compared with Yuan Qi Sen Lin, belong to the later application, and have been refused due to a number of “燃” series trademarks registered by Yuan Qi Sen Lin, which should not be the obstacles to the right of registration of the disputed trademark.
In addition, Yuan Qi Sen Lin has been approved to register a number of “燃” series trademarks, and the disputed trademark is the continuation of the registered trademark rights of Yuan Qi Sen Lin. The right status of trademark No. 34010188 is not stable, so they appeal to the court to suspend the trial until the status of the cited trademark is stable.
In this regard, the court of second instance found that by the end of the second instance, the cited trademark No. 34010188 is still a legal and valid trademark of the earlier application on the designated goods.
In addition, the application for registration of the cited trademarks No. 34010242, No. 34007897 and No. 34005718 on all the designated goods have been refused and are now invalid. The obligee, Jinshan company, gives up the exclusive right of “燃”.
Therefore, the court of second instance held that although there was nothing wrong with the decision of the defendant and the original judgment, the CNIPA still had to re-examine whether the application for registration of the disputed trademark violated the relevant provisions of the Trademark Law basing on the important facts which affect the registration of the disputed trademark had changed.
The final judgment decided to cancel the administrative judgment [2020] Jing 73 Xing Chu No.11240 of Beijing Intellectual Property Court, and the Decision of Review for trademark “燃” No. 35178063 ( [2020] No. 175912) issued by CNIPA, and required the CNIPA to make a decision on the application for reexamination of the trademark No. 35178063 “燃” filed by Yuan Qi Sen Lin ( Bei Jing ) Food Technology Group Co., Ltd.
