Recently, the Supreme People’s Court made the retrial ruling on the trademark opposition review case regarding No. 5485873 trademark “Dao Xiang Cun” opposition between Beijing Dao Xiang Cun and Suzhou Dao Xiang Cun. Suzhou Dao Xiang Cun’s request for retrial was rejected, and the decisions made by the first and second instance courts as well as the TRAB (Trademark Review and Adjudication Board), were maintained. Suzhou Dao Xiang Cun’s trademark application registering for goods listed in Class 30 “Cookies; Bread; Cake” was rejected. Thus, the dispute ended by the victory of Beijing Dao Xiang Cun. Liu, Shen & Associates represented Beijing Dao Xiang Cun in this case.
Suzhou Dao Xiang Cun filed a registration application for the opposed trademark, on July 18, 2006. The mark is composed of characters and a fan-shaped border with designated commodities on the goods of “Cookies; Bread; Cake and etc” in Class 30; Beijing Dao Xiang Cun took the trademark “Dao Xiang Cun” being used on the goods of “Yuanxiao; Zongzi (rice-dumpling)” in Class 30 as the cited trademark to file an opposition against the it. The opposition review, the first instance and the second instance all supported Beijing Dao Xiang Cun’s request, rejected the opposed trademark. Suzhou Dao Xiang Cun felt dissatisfied with the second instance judgment, and filed a retrial request before the Supreme Court.
The Supreme Court points out in the retrial decision that, in view of both companies having used the time-honored brand “Dao Xiang Cun” for many years, and having prior registered trademarks for goods in Class 30, the history, usage of the two prior trademarks and the cited mark, the spread of the brands and the similarity between the opposed mark and the prior and cited marks shall be considered. On the basis of the above considerations, the Supreme Court made the ruling that, the opposed trademark constituted similar trademark to the cited mark, therefore, Suzhou Dao Xiang Cun’s registration for the disputed trademark would break the current stable coexisted market pattern and lead to a confusion between the two “Dao Xiang Cun” marks, thus to harm the consumers’ interests as well as the development of the two companies. Therefore, the Supreme Court rejected Suzhou Dao Xiang Cun’s retrial request.
The decision of the Supreme Court is helpful to resolve the long-time dispute between Beijing Dao Xiang Cun and Suzhou Dao Xiang Cun, and maintains the co-existence, co-prosperity, co-maintaining and co-building of the time-honored brand “Dao Xiang Cun”.