On August 5, 2013, Mr. Jason Wang, partner at Beijing East IP Law Firm, was invited by China Intellectual Property News (state newspaper hosted by State Intellectual Property Office) to comment on the administrative lawsuit of the trademark McLaren rendered recently by Beijing High Court (second instance court for all the court appeals against Trademark Review and Adjudication Board).

Case Brief: McLaren Racing Defeated McLaren Polishing Wax

The application of the McLaren and Design mark (opposed mark) on goods of detergent, polishing wax, etc. constitute as similar to racing car and relevant services under the McLaren mark of McLaren Racing Limited (McLaren Racing). According to the final and effective decision rendered by the Beijing High Court as the second instance court, designated goods of windshield detergent, polishing wax, etc. (except goods of detergent, rust removing preparations, carpet cleaning detergent, shoe cleaning preparations) under the opposed mark constitute similar to those under the prior McLaren mark.

The opposed mark No. 4206891 is applied by a HUANG Yong, an individual from Shanghai, in August 2004 with designated goods in Class 3 for detergent, windshield detergent, polishing wax, etc. After publication for opposition, McLaren Racing filed an opposition, but failed. McLaren Racing then filed an opposition appeal before the Trademark Review and Adjudication Board (TRAB).

In the opposition appeal, McLaren Racing cited its registered marks McLaren Reg. No. G786448 and Reg. No. 2019373 in Class 12 for land vehicle, and claimed that the opposed mark and the two cited marks constitute as similar on similar goods, the opposed mark is a bad faith copy and preemptive registration of the well-known mark of McLaren Racing, and requested the opposed mark not to be approved for registration. The TRAB held that the opposed mark shall be approved for registration. Subsequently, this case went to administrative proceeding.

The first instance court (Beijing First Intermediate Court) hold that the partial goods of windshield detergent, glasses polish preparations, polishing wax, etc. under the opposed mark constitute as similar with those under the cited mark, while the other partial goods (detergent, rust removing preparations, carpet cleaning detergent, shoe cleaning preparations) under the opposed mark do not constitute as similar with those under the cited mark. Therefore, the first instance court revoked the TRAB decision.

Both the TRAB and McLaren Racing were unsatisfied with the first instance court’s decision and appealed to the second instance court (Beijing High Court). The second instance court sustained the first instance court’s holding.

Expert Comments: Jason WANG, Beijing East IP Law Firm

The focus dispute of this case is whether the recognition of similarity between goods or services shall breakthrough the Classification of Goods and Services (Classification) promulgated by Chinese Trademark Office based on Nice Agreement for purpose of cross Class protection. On one hand, the Classification, as the result and summary of practice, reflects relevant public’s general knowledge of goods and services, which can be used as a reference when determining the similarity thereof and shall be followed in general cases. On the other hand, the recognition of the similarity of goods and services shall be based on the relevant public’s general acknowledgement and determined comprehensively. In the specific case, it shall be based on a case by case basis to determine of breaking through the Classification when appropriate or not breaking through the Classification when not appropriate.

In this case, both the first instance court and the second instance court have precisely grasped the appropriate time and degree in breaking through the Classification. On one hand, this case involves goods of glasses detergent, polishing wax, etc. in Class 3, which are highly related to goods of land vehicle in Class 12 in terms of marketing channels and consuming public. Moreover, the opposed mark is basically identical to the cited marks in overall appearances, which is likely to cause confusion to the relevant public as to the source of goods. Thus, the breakthrough of Classification is necessary. Here, the Court decisions appropriately and precisely break through the Classification. One the other hand, the relatedness between goods of detergent, rust removing preparations, etc. in Class 3 and goods of land vehicle in Class 12 is relatively low, and the relevant public is less likely to be confused, and thus the Classification shall not be broken through. Partial breakthrough and partial non-breakthrough of the Classification rendered by the Courts has clearly reflected the standards of Classification breakthrough when appropriate as well as Classification non-breakthrough when not appropriate.

Opposed Mark Cited Mark 1 Cited Mark 2

Partial news reports on the above article are as follows:

China Intellectual Property News website
http://www.cipnews.com.cn/showArticle.asp?Articleid=28427

China Trademark Association website
http://www.cta.org.cn/zjcz/201308/t20130805_31711.html

China Intellectual Property Information website
http://www.iprchn.com/Index_NewsContent.aspx?newsId=62758