Court Denies Out-of-Class Trademark Protection

发布时间: 2019/4/17 10:28:00

  The dispute started around the trademark with the combination of a word "BG" and a figure of gear between SOHO STAR CORPORATION LIMITED based in Brunei and U.S. firms BG Products Inc, BG SmartVMA.

  "BG and figure" (trademark in dispute) was filed by SOHO STAR to Trademark Office (TMO) on February 2, 2010 and would be approved on February 28, 2011, certified to be used on the products of Class 5, such as radioactive materials for medical purposes, and sanitary disinfectants.

  On October 30, 2012, BG Products and BG SmartVMA lodged an invalidation request to former Trademark Review and Adjudication Board (TRAB), claiming that BG Products had registered the same trademark in the U.S. in 1976. BG Products used to sign a distribution contract with a natural person named Tsou, who was allowed to be the general distributor of BG's products and brands in during 1994 to 2012. The nexus between Tsou and SOHO STAR is SOHO is the reseller of BG Products under Tsou. The two conspired to  pilfer the BG trademark.

  On October 30, 2015, TRAB made a decision to dismiss the trademark in dispute on the ground that SOHO STAR know the agency relationship between Tsou and BG Products and the trademark "BG and figure". Therefore, the act of SOHO STAR was deemed as conspiring to squat a trademark under Article 15 of the Chinese Trademark Law (Note:"Where an agent or a representative registers the trademark of its principal in its own name without authorization.").

  Evidently SOHO STAR brought the case to Beijing IP court. After hearing, Beijing IP court confirmed SOHO STAR to be squatting trademark of its sales principals on the products of sanitary disinfectants and disinfectants by the agency, while upheld the registration on the products of radioactive material for medical purposes and radioactive drugs (products for review).

  The disgruntled TRAB appealed to Beijing High People's court.

  Beijing High confined the protection scope of BG's trademark in Article 15 to be the same or similar products. As the products for review differ largely from the trademark "BG and figure" of BG Products Inc in function, usage, consuming channel and consumers, which do not make the products, the court approved the registration on the products for review. In this connection, Beijing High rejected the TRAB appeal and supported the IP court judgment. (by Wang Guohao)

(Editor Shao Jingjing)

  (All contents of this newspaper may not be reproduced or used without express permission)
主办单位:中国知识产权报社 未经许可不得复制