A Chinese company Guangxi Liuzhou Cigar Company filed a trademark application for BAOMA (BMW in Chinese characters) in class 34, on July 26, 2002,covering tobacco and cigars. BMW AG filed an opposition against the mark, when it was published, on the grounds that BMW in Chinese characters are well-known in China on motor vehicles, and the opposed mark is identical with the opponent’s well-known mark. The use and registration will mislead the consumers and shall be prohibited.
The China Trademark Office made a decision in 2007 and held that although the opposed mark is identical with the opponent’s mark BMW in Chinese, goods covered by the two marks are totally different. Furthermore, there is no sufficient evidence to prove that the opponent’s mark has been diluted and damaged due to the use and registration of the opposed mark. So the opposed mark shall be approved for registration.
CCPIT represented BMW AG appealing to the Appeal Board in 2007, mainly on the grounds that prior to the filing date of the opposed mark, BMW in Chinese characters had become well-known in China. The registration and use of the opposed mark will dilute the opponent’s mark, and will confuse the consumers. It is not reasonable for the China Trademark Office to require that the opponent’s mark has already been diluted or damaged. The likelihood of confusion and dilution shall be avoided. The opponent has used and promoted their BMW and BMW in Chinese characters in China for a long time. Through the long term use and promotion, a fixed association has been built between BMW and BAOMA (BMW in Chinese characters) among the consumers. Although goods covered by the two marks, the registration and use of the opposed mark shall still be prohibited because BMW in Chinese characters are widely known to the public and shall enjoy broad protection. In order to support the opponent’s claim, BMW filed very strong arguments and abundant evidences to the Appeal Board.
The Appeal Board made a decision on the appeal in 2011 and held that, BMW has extensively used and promoted their trademark BMW in China for a long time, and has opened a Chinese branch office early in 1994. Through the opponent’s long term use and promotion, BAOMA (BMW in Chinese characters) enjoyed very high reputation among the Chinese public prior to the filing date of the opposed mark in 2002. The Appeal Board decided that BAOMA (BMW in Chinese characters) shall be recognized and protected as a well-known trademark in class 12. The opposed mark is identical with BAOMA (BMW in Chinese characters). Even the opposed mark is used on cigars, it is very likely that the consumers will be confused and the interest of the well-known mark owner will be damaged. Therefore, the opposed mark shall not be approved for registration according to Article 13 of the Chinese Trademark Law.
Among the 400 well-known trademarks recognized by the China Trademark Office and the Appeal Board at the same time, only 11 trademarks belong to foreign companies.
In the past, the China Trademark Office and the Appeal Board sometimes considered BAOMA (BMW in Chinese) having a fixed meaning of valued horse, and therefore, shall not obtain broader protection. From this decision, the Appeal Board recognized that fixed association has been built between BMW and BAOMA (BMW in Chinese characters), through the long term use and promotion of the opponent. As BMW in Chinese is so well-known in China, the mark shall even be sufficiently protected on very different products, like cigars, etc.
After BAOMA (BMW in Chinese characters) has been recognized as a well-known mark, we successfully represented BMW AG before the China Trademark Office and the Appeal Board and have opposed and cancelled many trademarks similar to BMW in Latin letters or Chinese characters, covering similar or even different goods and services. The interest of the true brand owner has been much better protected than before.
