Beijing Higher People’s Court entered into the final decision for the U.S. John Deere Company , revoked the decision made by Trademark Review and Adjudication Board (TRAB) of the State Administration for Industry and Commerce (SAIC), and revoked the registration of 约翰迪尔 yhdeR trademark.

The trademark 约翰·迪尔 was registered in September 2004, certified to be used in Class 7 products including scraper, excavator and bulldozer. John Deere Company, however, was not applied for registration in Class 4 lubricants products. In April 2004, Heilongjiang- based Lida eletromechaical department filed a trademark registration of 约 翰 迪 尔 yhdeR, and was approved by the Trademark Office under SAIC in January 2010. The trademark was certified to be used in Class 4 lubricant oil, grease and lubricants products.

In June 2010, John Deere company offered the objection application to TRAB. The Company held that the trademark in question was similar with the 约 翰·迪 尔 trademark which has been registered in class 7 scraper, excavator and bulldozer products. The company claimed that Lida eletromechaical department copied its registered trademark, which will bring confusion to consumer, and harm its interests.

In October 2013, TRAB held that the similarity was not constituted as distinctive differences in function, use, consumer and distribution channel exist between the trademark 约 翰 迪尔 yhdeR which was certified to be used in lubricant oil is different and 约 翰·迪 尔 which was used in scraper, excavator and bulldozer products. John Deere Company was failed to prove that the trademark 约 翰·迪 尔 has become a famous one before 约翰迪尔 yhdeR filed for registration. It also failed to prove that the character 约 翰 迪 尔 has developed as well- known trademark in lubricant market. So TRAB held that the registration of 约 翰 迪 尔 yhdeR does not violate Chinese trademark law and eventually affirmed the TMO decision. 

The disgruntled plaintiff then appealed to Beijing No.1 Intermediate People’s Court who would eventually uphold the decision made by TRAB.

The plaintiff refused the ruling of the court, and brought the case to Beijing Higher People’s Court. The court held that although the two trademarks were certified to be used in different classes, there is close correlation among function, distribution channel and consumers. Considering 约翰·迪尔 is a famous trademark, the two trademarks constitute similar trademark when used in same products. So ordered.  (by Su Jie)

(Source: CHINA REPORT INTELLECTUAL PROPERTY)