Beijing High awards Dulwich College in trademark case

文章来源: CHINA INTELLECTUAL PROPERTY NEWS
发布时间: 2020/9/24 15:23:00

  Over the denied registration of its No.29413698 德威公学 (trademark in dispute), the UK-based Dulwich College had a full and roller-coaster run at all possible forums. Its persistence paid off recently with a nod from the Beijing High People's Court.

 

  Dating back to March 2018, Dulwich College filed a trademark application for registration at the former Trademark Office (TMO) under the State Administration for Industry and Commerce (SAIC), requesting its trademark to be certified for use on Class 41 services including education, arrangement and organization of training courses. TMO rejected the application on the ground of similarity, noting the trademark in dispute and No.10707737 德威 (cited trademark) used on the same or similar service.

 

  The disgruntled Dulwich College then lodged a reexamination request to the former Trademark Review and Adjudication Board (TRAB), also under the SAIC, but failed. Dulwich then brought the case to Beijing IP Court, claiming that the trademark in dispute has enjoyed high reputation among the public after extensively usage. The trademark in dispute is different from the cited trademark in symbol composition and overall appearance. Therefore they are not similar.

 

  During the administrative proceedings, Dulwich furnished a consensus for co-existence agreement signed with Dewei Holding Group, owner of the cited trademark.

 

  After hearing, Beijing IP Court rebuffed the decision made by the former TRAB and ordered the China National Intellectual Property Administration (CNIPA), the current higher-up of the TRAB, to make a de novo one.

 

  CNIPA then appealed to Beijing High, claiming that although Dulwich submitted a co-existence agreement, the trademark in dispute is similar with the cited trademark, and such co-existence of the two trademarks would cause confusion among the public, constituting similarity when used in the same or similar service.

 

  Beijing High held that although the word德威 can be seen in both the trademark in dispute and cited trademark, there are certain differences in overall visual effect between the two trademarks. The co-existence agreement provided by Dulwich expresses the genuine will of Dewei, and does not violate relevant laws and regulations. The fact that there exist certain differences between the two trademarks can be used as a ground to rule out the possibility of confusion. The co-existence of the two trademarks in education service would not cause confusion among the public, and similarity would not be constituted when used in the same or similar service. In this connection, Beijing High rejected the CNIPA's appeal of CNIPA, and upheld the first-instance decision.(by Wang Jing)

 

  Editor Jiang Shuo)

 

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