The Trademark Review and Adjudication Board （TRAB） under the State Administration of Industry and Commerce of China （SAIC） recently decided to approve the application for trademark registration of services under review applied by “INFINITI”， a famous brand of luxury car owned by Nissan Motor.
Nissan Motor filed an application （No.12821630） for the registration of trademark for “INFINITI”， requesting in June 2013, certified to be used in Class 41 category with a total of 33 goods including rental of gaming devices, entertainment and organizing education.
The Trademark Office （TMO） under SAIC decided that 32 designated use services of “INFINITI” （hereinafter referred as services under review）， excluding rental of gaming devices, constituted a similar trademark used in one or similar services with the No.12015377 “全线传媒INFINITEMEDIA and Figure M” trademark. Therefore, TMO approved the application of “INFINITI” for trademark registration in rental of gaming devices and denied registration of services under review.
The “全线传媒INFINITEMEDIA and Figure M” trademark was filed by Shanghai Infinite Advertising Media Co., Ltd. in January 2013 and would be approved for use in Class 41 of goods including organizing cultural oreducational exhibition and entertainment in March 2015.
In September 2014, Nissan Motor filed an application to TRAB for reexamination. After being rejected, Nissan Motor then filed an administrative lawsuit to Beijing IP Court.
The Court held that the “INFINITI” trademark and the “全线传媒INFINITEMEDIA and Figure M” trademark are different in certain aspects including pronunciation and meaning. Therefore, the two trademarks are not similar. Accordingly, the Court revoked the TRAB decision and remanded the case to TRAB.
The disgruntled TRAB brought the case to Beijing High Court. The Court held that the “INFINITI” trademark in the services under review and “全线传媒INFINITEMEDIA and Figure M” trademark are basically the same in target customers, service methods, service channels, making them sharing the same or similar services.
Meanwhile, the Court held that there are significant differences between “INFINITI” trademark and “全线传媒INFINITEMEDIA and Figure M” trademark in the meaning of the characters, pronunciation, design style, and overall visual effects. Given that, the two trademarks are not similar trademarks in the same or similar services.
In this connection, Beijing High Court declined the TRAB complaint and upheld the first-instance decision .
Following the High Court decision, TRAB approved registration of “INFINITI” in the services under review. （by Wang Guohao）
（Editor Che Xingming）
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