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The Case of “电老虎” Trademark Dispute
来源: 作者: 时间: 2013-4-19 13:50:37

The Administrative Judgment of BeijingNo. 1 Intermediate People’s Court

(2004)- No.713

Plaintiff: Hubei Shushi Industrial Co., Ltd. Domicile: Xiaotian Road, Xiaogan City, Hubei Provence.

Legal Representative: SHU Jianguo, General Manager.

Authorized agent: HUANG Hui, the trademark agent of Beijing Wan Hui Da intellectual property Agency Co., Ltd.

Authorized agent: CHENG Xueqiong, trademark agent of Beijing Wan Hui Da intellectual property Agency Co., Ltd.

Defendant: The Trademark Review and Adjudication Board of the State Administration for Industry and Commence, address:  No.8,Sanlihe East Road, XingCheng District, Beijing City

Legal Representative: HOU Lin, director.

Authorized agent: ZHANG Liwei, female, cadre of the Trademark Review and Adjudication Board of the State Administration for Industry and Commence.

Authorized agent: ZHANG Chun Lei, female, the Trademark Review and Adjudication Board of the State Administrative Industrial and Commerce

The Third Person: Xiaogan Shushi Group Co., Ltd., Address: The north part of the Changzheng Road, Xiaogan City, Hubei Province.

Authorized agent: WANG Guoqiang, Male, employee of Beijing Huizhi Xinda Intellectual Property Agency Co., Ltd.

Authorized agent: ZHOU Yaoming, male, Vice-general manager of Xiaogan Shushi Group Co., Ltd.

Hubei Shushi Industrial Co., Ltd. (hereinafter referred to as the plaintiff) presented an administrative suit to the court because the plaintiff remains unconvinced by the objection review verdict of the Trademark Review and Adjudication Board of the state administration for industry and commerce (hereinafter as to “defendant”)

After accepted, the court formed collegiate bench according to law, and informed Xiaogan Shushi Group Co., Ltd., the interested party of the specific administrative act involved, to take part in the legal proceeding as a third party in accordance with Article 27, The Administrative Procedure Law of the People’s Republic of China, and heard such case in public on September 22nd, 2004. Authorized agents of the plaintiff (HUANG Hui, CHENG Xueqiong), authorized agents of the defendant (ZHANG Liwei, ZHAO Chunlei), and entrusted agents of the third party (WANG Guoqiang, ZHOU Yaoming) attend such trail. Currently, such case is ended.

On June 16th, 2004, the defendant reached a verdict: S.P.Z. [2004] No. 2432, The Trademark Review of Adjudication on Opposition Regarding No. 1580058 “电老虎Trademark (hereinafter referred to as No. 2432 Verdict), which ruled that the reasons for review of No. 1580058 “电老虎” Trademark under objection (hereinafter referred to as trademark applied) presented by the plaintiff is untenable in accordance with the stipulations of Article 33, Article 34 of The Trademark Law of People’s Republic of China (hereinafter referred to as the trademark law), and the trademark applied for is granted to be registered.

The plaintiff alleged that:

1The No.2432 Verdict is unclear in fact findings. It has been cited many times in the Verdict that “Xiaogan Zhongnan Rubber Plant (hereinafter referred to as Zhongnan Rubber Plant), subordinate company of the third party, has been officially selling electrical adhesive plaster in “电老虎” trademark since April 1997, and using such trademark for many years……”. However, seen from the materials provided by the third party, the third party and Zhongnan Rubber Plant are parallel and independent legal person, and the facts of “owned enterprise” or “subordinate enterprise” do not exist. Thus, the third party never uses such trademark applied.

2. The trademark applied for constitutes the similar trademark of the “电飛虎Dianfeihu” and “电虎王Dianhuwang and its design” (hereinafter referred to as reference trademark) registered by the plaintiff, which might cause the consumers to misunderstand or confuse. Because the meaning, pronunciation and marshalling sequence of the trademark applied and reference trademark, consumers can easily deem that there are certain connections between the trademarks applied and reference trademark, and treat them as part of the serial trademarks of the plaintiff in mistake, thus, confusion and mistake might be caused.

3. The plaintiff enjoys the appearance design patent right of label bearing the words of “电老虎” (hereinafter referred to as “电老虎” label), the trademark applied infringed upon the priority right of plaintiff.

4. The trademark applied has adverse influence as trademark applied for registration. “电老虎” is not a word of praise, but a word of derogatory sense with ironical meaning. Thus, registering “电老虎” as trademark has adverse influence, which violates the stipulations of Item 8, Clause 1, Article 10 of the trademark law

In Conclusion, plaintiff requested the court to revoke No. 2432 Verdict.

The defendant alleged that:

1All facts contained in (2001) X.J.C.Z. No. 15 and No. 16 Paper of Civil Mediation, (2001) X.J.C.Z. No. 44 Civil Award submitted by the third party proved the existence of subordination relations between the third party and Zhongnan Rubber Plant, and Plaintiff never denied such fact in the review procedure, or provide corresponding evidence; whether the trademark applied constituted the similar trademark to the reference trademark, whether the priority right of plaintiff is infringed upon, or adverse influence might exist when such trademark applied is registered. The determination of the relationship between the third party and Zhongnan Rubber Plant does not affect the verdict. Thus, the allegation of plaintiff mentioned above is untenable.

2It ‘s comparatively easy to distinguish the trademark and reference trademark in their pronunciation and visual effects. Seen from its meanings, the trademark applied has already become set phrase ordinarily used in people’s daily life, which has the specific meaning that completely different with its literal meaning, and leaves deep and easy-recognized impression; While the reference trademark does not have fixed meaning, and customers will not have different concept when recognizing, which can be easily distinguished; the trademark applied is quite different with the reference trademark in their pronunciations and visual effects. Thus, the trademark applied does not constitute similar trademark with reference trademark.

3The “电老虎” label alleged by plaintiff is a combinational design, which is composed of the characters of “电老虎”, letters of “D?L?H”, the design and colors of tiger, and the appearance design patent right for that is intended to protect the whole design; although such design contains the characters of “电老虎”, but the appearance design is intended to protect the design form, rather than the essence of such characters, thus, the trademark applied does not infringe upon the appearance design patent right of the plaintiff.

4. “电老虎” has plentiful meanings, and can not be simply characterized as a derogatory term. To sum up, the defendant requests the court to affirm No. 2432 verdict, and reject the plaintiff’s claims. The third party believed that the plaintiff’s application was lack of facts and legal basis, and that No.2432 Verdict made by the defendant is clear in determining the fact findings and correct in applying laws, therefore, the third party requests the court to sustain.

Defendant submitted the following proofs during the period of litigation: 1. The Trademark Review of Adjudication on Opposition Regarding No. 1580058 “电老虎” Trademark, proving the specific administrative act and the time for service of process; 2. Copies of the review materials submitted by the plaintiff and copies of the written plea submitted by third party, proving that the specific administrative act was made on the basis of adequate consideration of the parties’ requests and reasons; 3. The copies of trademark archives of trademarks applied and reference trademarks, copies of preliminary examination for approval and copies of trademark license, proving the basic conditions of trademarks applied and reference trademarks;

4The copies of the plaintiff’s the Corporation Business licensethe copies of certificate of enterprises registration relating to the third party, the copies of trademarks design certificate and invoices

5The copies of design patent certificate submitted by the plaintiff, no.4 and no.5 evidences proving the service time and service conditions of the trademark “Dianlaohu” by the third party, the defendant’s verdicts are correct in factual findings;

6The copies of the No.15 and No.16 X.J.C.Z. Civil Mediation Paper2001, No.44 X.J.C.Z. Civil Judgment Paper2001, and the copies of No.42 X.J.C.Z. Civil Mediation Paper (2001) , proving the counterfeits conditions of plaintiff and other parties with respect to the third parties’ “Dianlaohu” products;

7The copies of digital download materials submitted the third party and plaintiff, proving the multiple meanings of “Dianlaohu”,  and no adverse effects caused by trademarks applied;

8The copies of No. 01554SL Notice of Acceptance (2002), No. PY200201554DS Notice of Defense, No. 01554GZ, and No. 01554GZ0 Notice of Judicial Personnel in Trademark Appraisal Case (2002), proving the legitimate hearing procedure of the specific administrative acts under litigation.

The plaintiff submitted the following evidences to the Court in the period of litigation:

1The copies of The Trademark Review of Adjudication on Opposition Regarding No. 1580058 “电老虎” Trademark, proving that the verdict made by the defendant is untenable;

2The copies of No. 1428621 Trademark Registration Certificate of “Dianhuwang” plus design submitted by plaintiff;

3The copies of No. 1476176 Trademark Registration Certificate of “Dianfeihu” plus design submitted by plaintiff;

4. The copies of No. 1580058 Preliminary Examination for Approval of trademark “Dianlaohu”, Evidences 2, 3, 4, proving that the trademark applied constitute the similar trademark of the reference trademark used in the same commodity;

5.The copies of No. ZL00324809.7 Design Patent Certificate, proving that plaintiff enjoys the design patentpatent right of adhesive tape label marked with the characters of“Dianlaohu”;

6. The copies of Enterprises Group Registration Certificate and Duplicate of the License of the Business Corporation submitted by third party in the period of reply for review, proving that the third party and Zhongnan Rubber Plant are two independent and parallel legal persons, and there is no subordination relation between them, the factual findings in the defendant’s verdict is in error;

7. The copies of No. 00195 S.B.Y.Z. Verdict of the Trademark Opposition of “Dianlaohu” (2002);

8. Materials downloaded from the internet, Evidence 7, 8, proving that “Dianlaohu” is an derogatory term with adverse effects; the plaintiff shall supplement and correct evidence at court;

9. The registration certificate of establishment of Zhongnan Rubber Plant, proving Zhongnan Rubber Plant is not the subordinate company of the third party.

 

The Report of Hubei Accounting Firm submitted by the third party at court, proving the subordination relation between the third party and Zhongnan Rubber Plant.

The evidences mentioned above are cross-examined at court, and three parties issued the following cross-examination proposals: Plaintiff has no objection toward the the defendant, but considers that the evidences mentioned above can not support the defendant’s opinion. The plaintiff considers that the evidence submitted by the third party can not prove its proposals. The defendant and third party have no objection toward the authenticity of evidence 1-7, but consider that evidences mentioned above can not support the plaintiff’s opinions; evidences 8, 9 can not be admitted as evidences, because they are not submitted in the period of review.

After the cross-examination in court hearing and review of collegiate bench, this court certified that evidences submitted by defendant, plaintiff and the third party are real and legal, all of them can proved the relevant facts involved in this case, this court has affirmed all evidences mentioned above.

According to the valid evidence mentioned above, this court determines the factual findings are as follows:

On April 9, 1999 and June 23, 1999, Plaintiff applied for the registration of the trademarks of “电虎王Dianhuwang plus design” and “电飛虎Dianfeihu” (i.e. reference trademarks) in the commodities of No. 17 Category Isolating Materials, and obtained permission. On April 29, 2000, plaintiff applied to the State Intellectual Property Office for the design patent of adhesive tape label marked with the characters of “Dianlaohu”, and was granted on October 21, 2000. The pattern in such label is round, and is divided four parallel areas with the colors of blue, white, red and blue respectively from top to bottom, and letters “D.LH” are arranged in the top blue area, and the white area below is a design of tiger, the red area is characters and letters, “电老虎电气胶带ELECTRICAL TAPE”, and the bottom blue area is marked with the characters of “舒氏实业孝感市四环胶粘带有限公司” and “订购电话”, etc.

On June 12, 2000, the third party applied to the Trademark Office of the State Administration for Industry and Commence (hereinafter referred to as “trademark office”) for the registration of the trademark of “电老虎” in the commodities of No. 17 Category latex (natural rubber), isolating materials and watering hose, etc. The trademark office has published the trademark gazette after preliminary examination for approval.

Plaintiff proposed its objection toward the third parties’ application for trademark registration to the trademark office, and on June 11, 2002, the trademark office reached No. 00195 S.B.Y.Z. Verdict of Trademark Opposition (2002) according to Article 33, Trademark Act, firmly believed that reasons for objections proposed by the opponent are untenable, thus, the trademark applied is granted for registration. Plaintiff was not satisfied with those verdicts made by trademark office, and applied for reconsideration to the defendant on June 27, 2002. The defendant made its No. 2432 Verdict on June 16, 2004, which believed that:

1. because “电老虎” has already become the fixed term ordinarily used people’s daily life, it possesses the specific meaning that completely different with its literal meaning, the words in reference trademark are completely fabricated, and does not have fixed meaning, thus, relevant consumers might form different concepts when recognizing the trademarks of both parties, so that, these trademarks can be easily distinguished. Besides that, the subordinated company of the respondent——Zhongnan Rubber Plant has used the trademark of “电老虎” for many years, which has formed marked features of the trademark applied in designed commodities, so that, it  can be sufficiently distinguished from the reference trademarks, and relevant consumers will not mix up those two trademarks. Accordingly, the registration of trademarks applied does not violate relevant provisions of article 9 and article 28, Trademark Act.

2. Although applicant has applied for the design patent right of adhesive tape label marked with the characters of “Dianlaohu” before the application of trademark registration, and obtained the design patent right, but such label is the combinational design of the characters of “电老虎”, design and colors of 电老虎, while the trademark applied only contains the characters of “电老虎”, and because “电老虎” is fixed term usually used, there is obvious difference between the appearance of trademarks applied and the entire combination of the applicant’s label. Therefore, the registration of trademark applied will not cause any damage to the design patent right of applicant, and article 31, Trademark Act, which relates to “the registration of trademark applied shall not infringe upon the existing priority rights of others”, is not violated. In conclusion, the reasons for requesting reexamination proposed by the applicant are untenable. The trademarks applied are permitted to be registered.

This court believes that, according to article 9, Trademarks Act, the registration of trademarks applied shall not be in conflict with the priority of others legitimate rights, i.e. the trademarks applied for registration in this case shall not be identical to or similar to the trademarks registered or preliminarily examined for approval, which were intent to be used in the same type of products or similar commodities. The basic principle of determination of the identity or similarity of trademarks is whether such trademark may cause the confusion and misunderstanding of the publics, and the standard adopted is whether the components of such trademarks possess marked features in the aspects of sound, form and meaning, and can be easily recognized. The trademark applied in this case is composed of three characters “电老虎” and its Bopomofo. Thus, there are obvious differences in the structures, word characters, pronunciation and the entire appearances between the trademarks applied and reference trademarks, they are not similar to each other. Although both the trademarks applied and reference trademarks are used in commodities of isolating materials, the common consumers will not mix up or misunderstand these trademarks due to the evident distinction between the trademarks applied and reference trademarks.

Although plaintiff has applied for the design patent right of adhesive tape label marked with the characters of “Dianlaohu” before applying for the registration of trademark and obtained patent right after applying for the registration of trademarks, but because such design patent right is meant to protect the whole combination of shapes, designs, colors, while, the trademark applied only has three characters, which has distinct difference with the design patent of “电老虎”, in the appearance. The common consumers will not mix up or misunderstand these trademarks and the plaintiff’s legitimate rights and obligations will not be infringed upon.

In conclusion, No. 2432 verdict made by defendant is clear in factual findings and correct in law applications, legitimate in procedures, thus, this court affirms the original verdict, and does not support the plaintiff’s request for revocation of No. 2432 verdict due to the lack of factual findings and legal basis. Accordingly, based on Item One, Article 54, The Administrative Procedure Law of People’s Republic of China, the court rules as follows:

To sustain the No.2432 S.P.Z. Verdict Regarding No. 1580058 Trademarks Objection Review made by the Trademark Review and Arbitration Board of the State Administration for Industry and Commerce.

The litigation fee is 1000 Yuan, which is undertook by the plaintiff Hubei Shushi Industrial Co., Ltd. (already paid)

If refusing to accept the judgment, the refusal part could appeal to Beijing Higher People’s Court within 10 days after the date of service, and submitted the duplicates according to the number of the parties involved. If the applicant fails to make advance payment within 7 days after receiving the Notice of Advance Payment made by People’s Court, and fails to submit the application for deferred payment, such appeal will be considered as to be abandonment of appeal.

Chief Judge ZHANG Jie

Acting Judge: QIAO Jun

Acting Judge: QIANG Ganghua

November 15, 2004

       Court Clerk: LANG Liping

 

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