(By Luo Yanjie) Today we would like to introduce a typical case regarding Chrysler Group’s countering a subsequent “free-rider” who attempted to register “JEEP” trademark under Class 2 for oil paint through the anti-dilution legal protection on well-known trademarks.
Introduction to the Case:
Plaintiff: Chrysler Group LLC (the “Chrysler”)
Defendant: Trademark Office of the State Administration for Industry and Commerce (the “Trademark Office”) and Guangdong-based Dongguan Xiehe Chemical Co., Ltd (the “Xiehe Chemical”)
The Court of First Instance: Beijing No.1 Intermediate People’s Court No.: （2012）一中知行初字第3397号
The Court of Second Instance: Beijing Higher People’s Court No.: （2013）高行终字第575号
On November 4, 2004, Xiehe Chemical filed an application for number 4346189 “吉普车” (a Chinese translation of English word “JEEP”) trademark (the “disputed trademark”) under Class 2 for oil paint with the Trademark Office.
Chrysler Group applied respectively for number 647624 “吉普” trademark in June 24, 1992 and number 1030611 “JEEP” trademark in March 5, 1996 under Class 12 for vehicles.
During the period of preliminary examination and its publication of the disputed trademark by the Trademark Office, Chrysler Group opposed it but did not receive approval from the Trademark Office.
Subsequently, Chrysler Group applied for a review with the Trademark Review and Adjudication Board (the “TRAB”). Upon hearing the case, the TRAB held that, Chrysler Group was insufficient to prove its “JEEP” trademark and “吉普” trademark to be well-known trademarks which are familiar with relevant publics through long time use and widely promotion before the registration date of the disputed trademark. Thus, the reasons for review were false. Therefore, the TRAB decided the application for the disputed trademark shall be approved for registration on the grounds of Chrysler Group pursuant to Article 33 and Article 34 of the Trademark Law
Dissatisfied with the decision contained by the TRAB, Chrysler Group brought an administrative suit to Beijing No.1 Intermediate People’s Court. This case was heard by two courts, i.e., Beijing No.1 Intermediate People’s Court and Bejing Higher People’s Court, and ended up with the success of the Chrysler Group. The courts revoked the decision of the TRAB and ordered the TRAB to remake a decision.
The courts held from the following aspects:
First, “JEEP” trademark constituted a well-known trademark. From the 1992 of its trademark registration, Chrysler Group’s “JEEP” trademark was familiar with relevant publics through long time use and widely promotion which formed a corresponding relationship with Chrysler Group, the court determined the “JEEP” trademark to be a well-known trademark on the grounds of facts of its trademark known to the public.
Second, the disputed trademark was constituted identical with or similar to the “JEEP” trademark. Under the same pronunciation and name, general consumers will confuse the disputed trademark with Chrysler Group’s “JEEP” trademark. When the two trademarks were identical with or similar to each other, there existed some conditions like reproduction, imitation or translation of Chrysler Group’s “JEEP” trademark.
Third, the “JEEP” trademark shall obtain cross-classification protection. The disputed trademark that combines another people’s well-known trademark with the common name for authorized commodities as a new trademark applies for registration for oil paint. Such registration of disputed trademark may great dilute and denigrate the distinctiveness of a precedent well-known trademark and decrease the commercial value of Chrysler Group’s “JEEP” trademark, thus constituted the circumstances where it may mislead the public and damage the interests of the registrant of the well-known trademark. Therefore, the registration of the disputed trademark for oil paint violates Paragraph 2, Article 13 of the Trademark Law and shall not be approved.
Lawyers’ Comments:
Essentially this case regarding the anti-dilution protection of well-known trademark shall apply two provisions by the courts:
- Paragraph 2, Article 13 of the Trademark Law
Where a mark is a reproduction, imitation, or translation of a third party’s well-known trademark which has been registered in China in respect of different or other types of goods, which may mislead the public and damage the interests of the registrant of the well-known trademark, such mark shall not be registered and prohibited from being used.
2. Paragraph 2, Article 9 of the Interpretation of the Supreme People’s Court on Several Issues Concerning the Application of Law in the Trial of Civil Dispute Cases Involving Well-Known Trademark Protection
A circumstance that is sufficient to mislead the relevant public to believe that an alleged trademark and a well-known trademark have a connection to a certain extent, diluting the distinctiveness of the well-known trademark or denigrating its market reputation, or illicit utilizing the market reputation of the well-known trademark, falls within the circumstance that “misleads the public, which may cause damage to the interests of the registrant of the well-known trademark” specified in Paragraph 2, Article 13 of the Trademark Law.
In this case, due to the fact that “JEEP” trademark has been a well-known trademark for Sports Utility Vehicles (the “SUV”), general consumers won’t, when they purchase oil paints, confuse the manufacturers between Xiehe Chemical and Chrysler Group. However, the court still decided that “JEEP” trademark under Class 2 for oil paint, if is approved to register, will improperly employ the value of Chrysler Group’s trademarks in Sports Utility Vehicles, dilute the distinctiveness of the well-known trademark and damage the interests of the registrant of the well-known trademark. Based on above reasons, the courts revoked the decision of the TRAB.
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