Recently, the Beijing High Court had to give its opinion about BMW AG claiming a Chinese company was infringing its trademark rights. The luxurious German vehicle constructor registered its trademark ‘BMW’, ‘BMW and device’ as well as the Chinese transliteration ‘宝马’. The application of trademarks ‘Paul BMW’ and its Chinese transliteration ‘保罗宝马’ were later filed under classification 25 by Shenzhen Red Dragonfly Clothing Trading Co., Ltd and then approved in 2012. The trademark was later transferred to Wenzhou City Kaluochi Shoes Co., Ltd, the defendant before the Beijing High Court.
In 2014, BMW AG brought a lawsuit to the Trademark Review and Adjudication Board – referred to as TRAB – alleging the Chinese trademark was a copycat and that BMW had an international reputation in China. However, the TRAB ruled against the German company pointing out Paul BMW was registered under the classification 25 which covers clothing while BMW was registered under the classification 12 meant for vehicles. The TRAB considered the products were not similar and added BMW reputation was built in vehicle industry, not in clothing. Consequently, Paul BMW’s registration did not bring confusion to the public and hence, did not harm BMW AG’s interests.
Unsatisfied with the ruling, BMW AG brought the case to the Beijing Intellectual Property Court which stressed firstly that Kaluochi’s trademark was composed of BMW AG’s trademark ‘BMW’ and secondly, that both plaintiff and defendant products were similar under the classification of which they were registered. At this point, according to the Court, BMW AG’s international reputation was no longer necessary. Therefore the Court ordered Kaluochi to stop selling products under Paul BMW trademark. Right after the decision was made, Paul BMW’s owner appealed to the Beijing High Court which, again, ruled in favor of BMW.