Abstract

We, Kangxin Partners, P.C., filed an invalidation action against the trademark,  (No.66146740in Class1) (“the disputed mark”) on behalf of MAN Marken GmbH (“Client”) on January 2, 2024.  The National Intellectual Property Administration, PRC (“CNIPA”) examined the case and decided to invalidate the disputed mark for registration.

Background

MAN Marken GmbH is the owner of the brand , its "MAN" brand originated in 1758, with its headquarters located in Munich, Germany. It is a world-leading manufacturer of commercial vehicles and automotive components, as well as a provider of transportation solutions, and is one of the Fortune Global 500 companies. Its business covers medium, heavy, and super-heavy trucks, special vehicles, city buses, luxury vehicles, high-end engines, automotive components, and a range of services related to passenger and cargo transportation. Among these, its heavy truck products are the most renowned in the industry. Its production bases and service network span over 120 countries worldwide, employing more than 60,000 people. The client and the cited marks enjoy high reputation amongst relevant public in China. The client was of the opinion that the disputed mark is a “similar mark over similar goods” compare with the client’s mark under international registration No.1346555A and 1347096A, respectively. Thus, we initially filed opposition against the disputed mark on behalf of the client, but unfortunately, the CNIPA did not support us, reasoning that although the goods of the marks are similar, the marks are not similar.  The client was not satisfied with the decision and entrusted us to file invalidation against this trademark.

The comparison of the marks is listed as below:

Key Issues

In the invalidation, we mainly argued that:

1) The disputed mark and the cited marks are “similar mark over similar goods,” in violation of Chinese Trademark Law, Article 30; therefore, the disputed mark should be invalidated;

2) The cited marks "MAN" obtain high reputation through use and as English trade name, "MAN" also obtain certain reputation, so that the registration and use of the disputed mark will easily cause confusion and misunderstanding amongst the relevant pubic;

3) The disputed party filed the disputed mark without use intention but in bad faith and filed the disputed mark through improper means, which violates Articles 4, 7.1, 44.1 of Trademark Law.  Therefore, it should be invalidated.

On December 27, 2024, the CNIPA issued the decision: the disputed mark and the words/distinctive words of the cited marks "MAN" are similar in terms of letter composition and visual effects, constituting similar marks. The designated goods of the disputed mark and the designated goods of the cited marks have close relevance in terms of way of use, sales channel, and consumers. The co-existence and use of the disputed mark and the cited marks over similar goods would mislead consumers that goods bear the two parties' marks come from one market entity or there is certain relevance between them, causing confusion about the origin of the goods. Therefore, the disputed mark and the cited marks are similar marks over identical or similar goods, in violation of Article 30 of the Trademark Law. 

Key Point of the Case

The key issue of this case is that 1) the disputed mark is a “similar mark” with the cited marks; 2) the goods of the disputed mark are similar to those of the client’s cited marks.

With respect to issue 1, in the opposition action, the examiner unfortunately held that the disputed mark is not similar to the cited marks, we assume that is because the cited marks MAN have specific meaning, so the examiner considered the disputed mark can be distinguished from the cited marks.  However, in the invalidation action, we argued that the both parties’ marks are similar because they share the letters MAN, and the cited marks enjoy high reputation amongst relevant public, so only with additional letter O in the disputed mark cannot make it distinguished from the cited marks. We also collected some precedents to support our argument, such as opposition decisions concerning the marks ZTEN vs ZTE, ZTEC vs ZTE, AELLE vs ELLE, etc. Finally, the examiner was successfully persuaded. 

With respect to issue 2, according to the Chinese Classification of Goods and Services, some goods of the disputed mark are similar to the goods of the cited marks, but rest of goods of the disputed mark are not similar to the goods of the cited marks according to the Classification system, because they fall in different subclasses.  However, we hold there would be certain room to argue the goods connection of Class 1 with respect to relevant public, sales places and channel, and use situation, and based on the high reputation of the client and the cited marks in China, the coexistence of them is likely to cause confusion in the market.  Gladly, the CNIPA supported our claims and decided to invalidate the disputed mark on all the designated goods.