The German company Volkswagen had a rift with Shanghai Xizhong Auto Parts Company over No.13901847 大 夂 trademark. Recently, Beijing High People's Court made its final judgment, holding that Shanghai Xizhong Company copied and imitated Volkswagen's well- known trademark registered in China.

The trademark in dispute was filed for registration by Shanghai Xizhong Company on January 13, 2014, and was certified to be used on Class 7 goods including engine spark plugs, auto water pumps and shock absorbers (machine parts) on April 21,2015.

On February 6, 2016, Volkswagen lodged an invalidation request to the former Trademark Review and Adjudication Board (TRAB), asserting that the brand 大众（Note：official Chinese translation of Volkswagen) was known by the public in China and the registered No.2021141 trademark 德国大众 and No.2021133 trademark 大 众 汽 车 (cited trademarks) were already famous before the trademark in dispute was filed for registration. The trademark in dispute constituted copy and imitation of the cited trademarks and its registration and use would damage the legal rights of Volkswagen as the owner of the well-known trademarks.

The former TRAB held that the Volkswagen's grounds given were not valid and upheld the trademark in dispute on March 13, 2017.

The disgruntled German auto maker then brought the case to Beijing IP

Court.

Beijing IP Court held that the protection scope of well- known trademarks should not be limited to the associated goods. In the case, the registration and use of the trademark in dispute may make the relevant public think that there are some associations between the trademark in dispute and the cited trademarks, an act of free-riding the market reputation of the famous trademarks that would damage the  interests of Volkswagen. So the Court made its first-instance judgment on December 27, 2018, revoking the former TRAB's decision and asked the former TRAB to revisit the case.

The former TRAB then appealed to Beijing High People's Court, claiming that the trademark in dispute was not similar to the cited trademarks. The evidence Volkswagen submitted could not prove that the cited trademarks were well-known before the trademark in dispute was filed for registration and the registration of the trademark in dispute  should be upheld.

Beijing High People's Court held that the evidence could prove that the cited trademarks were up to the standard on well- known before the trademark in dispute was filed for registration. The Chinese pronunciation of 夂 in 大 夂 trademark was similar to that of 众 in the cited trademarks, constituting copy and imitation of the cited trademarks. Meanwhile, there were some convergence in functions, sales channels and the targeted consumers between the products of those  contested trademarks. The registration and use of the trademark in dispute would confuse the relevant public, causing damage to Volkswagen's interests. In the connection, Beijing High People's Court declined the request of the former TRAB and upheld the trial Court judgment. (by Wang Jing)

（Source: CHINA INTELLECTUAL PROPERTY NEWS)