Recently, the Supreme People’s Court released the Top 10 IP cases in 2014. No. 5485873 “Dao Xiang Cun” trademark opposition review case, represented by Mr. Kai Yang and Mr. Peng Zheng, attorneys of Liu, Shen & Associates, was successfully selected.
The case is about Suzhou Dao Xiang Cun’s opposed trademark. On July 18, 2006, Suzhou Dao Xiang Cun filed a registration application for a trademark which was 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 registered and used on the goods of “Yuanxiao; Zongzi (rice-dumpling)” in Class 30 as the cited trademark to file an opposition against it. The opposition review, the first instance and the second instance of the case all supported Beijing Dao Xiang Cun’s request and 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 made a retrial ruling, which rejected Suzhou Dao Xiang Cun’s request for retrial and sustained the decisions made by the first and second instance courts as well as the TRAB (Trademark Review and Adjudication Board). Suzhou Dao Xiang Cun’s trademark application registering for goods listed in Class 30 “Cookies; Bread; Cake” was rejected. Thus, Liu, Shen & Associates represented Beijing Dao Xiang Cun to get the final victory in the fight for the Chinese time-honored brand “Dao Xiang Cun”.
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, the prior registered marks and cited marks shall be considered. On the basis of the above considerations, the Supreme Court made a ruling that, the opposed trademark constituted similar trademark to the cited mark. Therefore, Suzhou Dao Xiang Cun’s registration for the opposed 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.
The decision of the Supreme Court is helpful to resolve the long-time disputes between Beijing Dao Xiang Cun and Suzhou Dao Xiang Cun, and maintains the co-existence, co-prosperity, co-maintaining and co-building of the Chinese time-honored brand “Dao Xiang Cun”.