Abstract

MAN Marken GmbH (hereinafter referred to as "the applicant") entrusted Kangxin Partners, P.C. to file a trademark opposition against the trademark "曼恩博达" (No. 70124921 in Class 9, hereinafter referred to as "the disputed mark"). The China National Intellectual Property Administration (CNIPA) did not rule in the applicant's favor.  The applicant did not agree with the CNIPA's opposition decision, and filed the invalidation action against the disputed mark. Finally the CNIPA ruled to invalidate the disputed mark based on the Articles 30 and Article 44(1) of the Chinese Trademark Law.

Background

The applicant holds the registered trademark "曼恩车联网" (No. 37946733 in Class 9), which is approved for use on goods such as "vehicle batteries, etc."  The disputed trademark "曼恩博达" was applied on March 11, 2023, and was approved for registration on May 13, 2024, covering goods in Class 9, including "batteries; electric vehicle charging piles; etc." The applicant held that the disputed trademark is highly similar to its prior registered trademark and that the registrant’s actions constituted malicious registration and violated the principle of good faith.

The comparison of the trademarks is as below:

Key Issues

In the invalidation, the key issues are:

1) Trademark Similarity: Whether the disputed trademark "曼恩博达" is highly similar to the cited trademark "曼恩车联网" in terms of composition, visual effect, and pronunciation, thereby constituting similar trademarks.

2)  Goods Similarity: Whether the goods covered by the disputed trademark (e.g., batteries, charging piles) and the cited trademark (e.g., vehicle batteries) are similar or closely related in function, use, and consumer group.

3) Malicious Registration: Whether the registrant’s actions, including the registration of multiple trademarks copying well-known brands (e.g., "Maserati," "Daimler"), violated the principle of good faith and constituted malicious registration under Article 44(1) of the Trademark Law

Case Analysis

Determination of Trademark Similarity:

The disputed trademark "曼恩博达" fully incorporates the distinctive part "曼恩" of the cited trademark "曼恩车联网."  The additional       characters "博达" do not create a distinct meaning, and the  overall impression of the two marks is highly similar.

The CNIPA noted that "曼恩" is not a common Chinese phrase and has strong distinctiveness due to its association with the applicant’s famous brand. The registrant’s use of "曼恩" was deemed intentional to create confusion among consumers.

Determination of Goods Similarity:

All the disputed trademark’s goods except for the goods, automotive diagnostic scanning equipment, are similar to the cited trademark’s goods (e.g., vehicle batteries) in respect of function and target consumer groups, etc., the CNIPA ruled that they constituted similar goods.

Malicious Registration:

The registrant had filed multiple trademarks copying well-known brands (e.g.,"Maserati," "Daimler"), indicating a pattern of malicious registration. The CNIPA concluded that such actions disrupted       the trademark registration order and violated Article 44(1) of the    Trademark Law.

Case Inspiration

Comprehensive Analysis of Trademark Similarity:

In invalidation cases, it is crucial to analyze trademark similarity from multiple angles, including composition, visual effect, and pronunciation, while emphasizing the distinctiveness and reputation of the cited trademark.

Flexibility in Goods Similarity Determination:

The subclass principle should not be the sole criterion for judging goods similarity. Factors such as function, use, and consumer perception should be considered to  align with market realities.

Addressing Malicious Registration:

Evidence of a registrant’s pattern of copying well-known trademarks can strengthen invalidation claims under Article 44(1). Proactive monitoring and legal action are essential to combat such practices.

Strategic Use of Precedents

Citing precedents  where similar trademarks or goods were deemed related can bolster arguments,  as demonstrated in this case.

Conclusion

The CNIPA’s ruling to invalidate the disputed trademark underscores the importance of protecting well-known brands from malicious registrations and highlights the flexible application of marks similarity. This case serves as a valuable reference for future invalidation actions involving similar issues.