In November 2011, a company named Qingdao Hongtyre Group Co. filed for registration with the Chinese Trade Mark Office (CTMO) a trademark “GOLD PARTNER” in class 12.
Qingdao Hongtyre’s Trademark
Pirelli Tyre S.p.A., the tyre company, discovered the existence of this application and filed an opposition considering that the design of the elongated “P” was similar to the “P” of “PIRELLI” in use for similar products (namely tyres).
Pirelli Tyre S.p.A.’s Trademark
The CTMO held that the trademarks were similar and thus rejected the application. In addition, considering that some Gold Partner tyres were found on the market, Pirelli started an infringement case before the Qingdao Intermediate People’s Court in order to prevent the selling of products under the trademark “GOLDEN PARTNER”. The Court was of the opinion that the use of the trademark “GOLDEN PARTNER” for similar products had infringed the prior right of the Italian company, and therefore made a favorable decision.
At the same time, the trademark applicant (Hongtyre) filed an appeal against the opposition decision before the Trademark Review and Adjudication Board (TRAB) to contest the similarity between the two trademarks. However, even though the decision of infringement from the Qingdao Court had already been issued, the TRAB surprisingly overthrew the rejection decision issued by the CTMO on the ground that the trademark “GOLD PARTNER” is not similar to “PIRELLI” in term of pronunciation and composition. Thus, the registration of the trademark “GOLD PARTNER” was finally confirmed.
Not satisfied with the fact that the trademark “GOLD PARTNER” was still registered and used by the opponent, Pirelli did not give up and further filed an invalidation request before the TRAB with the aim of invalidating the registration of the infringed trademark. By a decision issued on October 31, 2016, the TRAB overturned its previous decision and held that the trademarks were similar in term of design style, overall visual effect and covered products. Furthermore, the TRAB concluded that “PIRELLI” trademark had gained a certain reputation prior to the filing date of trademark “GOLD PARTNER”, and consequently, the co-existence of both trademarks would make the relevant public to deem that both were from the same entity or at least had a certain connection, thus easily causing confusion.
This TRAB decision is worth notice because it over threw its entire previous decision issued by the same administrative authority. The decision emphasizes that it is the design of the elongated “P” of “PIRELLI” trademark that is regarded as crucial in assessing the similarity and reputation on the market.
HFG represented Pirelli in these cases.