Mobil Kicks Off Free Rider of Its Esso Trademark

发布时间: 2018/2/7 14:21:00


  Around a registered trademark "埃索黄金眼 (Note: Though its spelling is ASSO Golden Eyes in English, Chinese spelling of ASSO is exactly the same with ESSO)" certified on products of synthetic rubber, renowned oil and gas manufacturing, ExxonMobil (Mobil) was involved in a trademark dispute with ASOO Technology Co., Ltd. (ASOO) based in Guilin, Guangxi.

  Recently, Beijing High People's Court made a final decision to revoke the ruling made by the Trademark Review and Adjudication Board (TRAB) under the State Administration for Industry and Commerce (SAIC) on the ground that ASOO had filed for registration of No.9945806 trademark "埃索黄金眼" (trademark in dispute) by deception or other illegal means, and ordered TRAB to take a new look.

  Mobil was the world-renowned oil and gas manufacturer in possession of producing facilities and selling products globally. ASOO was established in 2003 with business in producing rubbers, lubricants and vehicles accessories and providing vehicles maintenance and auto decoration.

  The trademark in dispute was filed in September 2011 by ASOO to the Trademark Office (TMO) under SAIC and was registered in November 2012, certified on the products of Class 17 such as synthetic rubber, clutch cushion, and organic glasses.

  In October 2015, Mobil lodged an invalidation request to TRAB citing the registered trademark "埃索" or "ESSO" (cited trademark) certified on products of rubber, oil and petroleum, claiming that the trademark in dispute and cited trademark had constituted similarity on the same or similar products.

  In May 2016, TRAB made a ruling to uphold the trademark in dispute. The disgruntled Mobil brought the case to Beijing IP court. Beijing IP court held that the trademark in dispute and cited trademark had constituted similarity and revoked the ruling in the first instance and ordered TRAB to take a de novo look. Then TRAB and ASSO appealed to Beijing High.

  After hearing, Beijing High held that the products of synthetic rubber and plastic board certified by trademark in dispute were the same or similar with the products of rubber and industrial plastics certified by cited trademark in function, use, production units, distribution channels and consumers, constituting same or similar products.

  In addition, Beijing High held that the trademark "埃索" in Chinese and "ESSO" in English were corresponding to each other as"埃索" and "ESSO" had been used tightly together by Mobil for a long time. The trademark in dispute was formed by characters "埃索黄金眼", which were similar in spelling with cited trademark, constituting similarity. In this case, the public would easily misunderstand that the two trademarks originated from the same market player or had special links, causing confusion and mistake in the origin of the products.

  In this connection, Beijing High finally rejected the appeal from TRAB and ASSO and sided with the first-instance decision.  (by Shu Tianchu)

  (Editor Li Xingyi)

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