TRAB, Germany Century BMW Group Share Limited (registered/located in Hong Kong, “HK Century BMW”) vs. Bayerische Motoren Werke Aktiengesellschaft (registered/located in Germany, well known BMW automobile manufacturer, “BMW Company”)
BMW Company filed an application for cancellation of the registered trademark No.4648504 - owned by HK Century BMW (an entity unrelated to the BMW Company). The registration of the trademark in dispute was maintained according to the TRAB’s decision made on 8 November 2011, so BMW Company appealed to the Beijing No.1 Intermediate Court.
The Intermediate Court concluded that the trademark in dispute was a device without any derogatory or negative implications, so it would not produce “adverse effects” referred to in Article 10, paragraph 1(8) of the PRC Trademark Law as claimed by the BMW Company. The court went on to conclude that this mark was not “registered by deception or unfair means” referred to in Article 41, paragraph 1 of the PRC Trademark Law, since it would not have any adverse affect on the public order, public interest or trademark registration management order. The trademark in dispute included BMW Company’s distinctive propeller device in blue and white, which BMW Company had registered in China under China Trademark Registration No. G673219. However, the TRAB wet on to conclude that the two marks constituted similar marks, such that consumer confusion could arise if the disputed mark was permitted to be registered and used in China.
The TRAB and HK Century BMW appealed to the Beijing Higher Court. The Higher Court concluded on 18 June 2013, that the trademark in dispute was similar to the cited registration – it found that the relevant public would be confused by the use of the disputed mark on apparel products, even though that mark also included other devices, considering the high reputation of the propeller device owned by the BMW Company. Thus, the Intermediate Court’s decision was maintained in relation to this finding of similarity of the marks.