Weekly China Trademark News Updates

June 21, 2023

1. BMW’s “iDrive” mark disputes came to an end. The Disputed Mark constituted  as “squatted with unfair means”

Disputed Mark

The Beijing High Court recently concluded an administrative litigation for trademark invalidation regarding the “IDRIVEERPLUS” (“Disputed Mark”) with Reg. No. 34925244. The court invalidated the Disputed Mark on “recorded computer operating program; vehicle brake tester” citing Article 32 of the 2013 Chinese Trademark Law and ruled that the registrant Beijing Zhixingzhe Technology Co., Ltd. (“Zhixingzhe”) squatted the Disputed Mark by unfair means.

The court found that the evidence submitted can prove that before the Disputed Mark’s application date, BMW’s “iDrive” logo had gained certain fame and influence on the intelligent driving control system of automobiles through long-term use and extensive publicity. The Disputed Mark and the “iDrive” logo previously used by BMW constituted similar marks.

The Disputed Mark’s approved goods for “recorded computer operating program; vehicle brake tester” and other goods were similar to the automobile intelligent driving control system under BMW’s unregistered trademark “iDrive” in terms of function, use, production department, sales channel, consumer, etc., and constituted similar goods. As an automobile operator in related industries, Zhixingzhe should have some understanding of BMW’s “iDrive” unregistered trademark. In this case, Zhixingzhe applied for registration on goods “recorded computer operating program; vehicle brake tester” that are closely related to those goods under BMW’s “iDrive” unregistered trademark. The purpose of filing the Disputed Mark, which was similar to “iDrive”, was hardly legitimate. Therefore, the registration of the Disputed Mark on goods “recorded computer operating programs; vehicle brake testers” had constituted “preempting registration of others that have been used and owned by others” as mentioned in Article 32 of the 2013 China Trademark Law. The Disputed Mark shall be invalidated.

2. The Shanghai High Court recognized the “NOK” mark as a well-known mark and ordered RMB 1 million in damages

The Shanghai High Court recently concluded a trademark infringement and unfair competition litigation between NOK Co., Ltd. (“NOK”) and En Ou Kai (Tianjin) Lubricating Oil Co., Ltd. (“En Ou Kai Tianjin”), Shanghai Torch Lubricating Oil Co., Ltd. (“Torch”). The court recognized NOK’s “NOK” mark as a well-known mark on oil seal goods and held that En Ou Kai Tianjin’s use of “NOK” mark, “En Ou Kai in Chinese” as trade name and the “nokrhy.com” domain name and related publicity activities constituted trademark infringement and unfair competition, together with Torch, the defendants should compensate NOK for economic losses of RMB 1 million (USD139,547).

Disputed Mark

The court found that the “NOK” trademark is a well-known trademark on oil seal goods, and at the same time, it found that “lubricating oil” goods are closely related to “oil seal” goods and constituted similar goods. The use of the registered trademark “NOK” under the name of its affiliated company by En Ou Kai Tianjin infringed upon NOK’s well-known mark “NOK.” The use of the unregistered trademark “NOK” by En Ou Kai Tianjin infringed upon NOK’s “NOK” trademark right. The registered trademark “NOK” En Ou Kai Tianjin has a corresponding relationship with the Chinese character “En Ou Kai,” and the trademark “NOK” has a very high reputation. En Ou Kai Tianjin had the intention to take advantage of the popularity of NOK’s mark, and the behavior of using the name “En Ou Kai in Chinese” would easily cause confusion and constituted unfair competition. The registration and use of the domain name “nokrhy.com” by En Ou Kai Tianjin showed its intention of taking advantage of the popularity of NOK’s mark, which constituted unfair competition. En Ou Kai Tianjin uses Japanese introductions and “NOK Co., Ltd.” and other behaviors in order to take advantage of NOK’s fame, which may easily cause the relevant public to mistakenly believe that by En Ou Kai Tianjin was related to NOK, and constituted false propaganda.

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