Airbus Deutschland GmbH Failed to Prevent a Chinese Company from Diluting Its Global Famed Brand Airbus in China
Senior Mark by Airbus
by Shenyang Yongfeng Food Co.
Reg. No. 361935
Filing date: September 19, 1986
Registration date: September 20, 1989
Class 12: Aircraft and parts
Filing date: July 24, 1998
Registration date: December 14, 1999
Class 30: biscuit, candy, chocolate, ice cream, among other things
Unlike the US, EU or Japan, China did not generate its own doctrine or theory on the protection of well-known trademark
China, a huge market and it is also probably the most attractive place where any famous brand name in the world want to enter and penetrate. With respect to the protection of well-known trademark, China is a country that does not focus on developing or generating its own theory or doctrine on protection of famous trademark. Instead, it basically absorbs and adopts in a way to comply with the international legal provisions available in the Paris Convention, the TRIPs Agreement and the WIPO joint Recommendation concerning the provisions on the protection of well-known marks.
Provisions on protection of well-known marks in China can be found in paragraph 2 of Article 13 of the 2001 Chinese Trademark Law stating that “where a trademark in respect of which the application for registration is filed fdr use for non-identical or dissimilar goods is a reproduction, imitation or translation of the well-known mark of another person that has been registered in China, misleads the pub1ic and is likely to create prejudice to the interests of the well-known mark registrant, it shall be rejected for registration and prohibited from use”.
As far as the conditions for recognizing a potential trademark as a famous trademark in China is concerned, upon the parties’ request, 5 required factors must consider before making a decision on whether the subject trademark is well-known or not, comprising:
(1) The degree of public recognition of the mark in its trading areas;
(2) how long the mark has been in use;
(3) the duration and extent of advertising and publicity of the mark, and the geographical extent of the trading areas in which the mark is used;
(4) the protection of the mark as a famous trademark;
(5) Other reasons for the fame of the trademark.
China’s position on protection of well-known marks viewed from the case Airbus
We can partly figure out the legal position on the protection of famous trademark in China through the case that Airbus Deutschland GmbH, the world's second largest manufacturer of civil aircraft, failed to prove its trademark AIRBUS is well known in China. Airbus Deutschland GmbH owns Chinese trademark registrations for the word AIRBUS for aircraft-related products and services whose filing dates go back around early September 1986.
In 1998, a Chinese company Shenyang Yongfeng Food Co. applied for registration of trademark "Airbus & Kongzhongkeche" (Kongzhongkech is a phonetic transcription of four Chinese words that were translated from AIRBUS) in class 30 including confectionery. Such trademark application was later approved by the Chinese Trademark Office (CTMO). Airbus Deutschland filed an objection but was rejected by the CTMO. The CTMO’s rejection decision after being complained to the CTMO’s higher authority agency by Airbus Deutschland was maintained the Trademark Review and Adjudication Board (TRAB) because the TRAB argued that the Chinese company’s use and registration of trademark AIRBUS pertaining to candy does not confuse the public. Airbus Deutschland filed a lawsuit against the TRAB's decision before the Beijing No. 1 Intermediate Court contending that AIRBUS deserves to be protected as a well-known trademark under the Paris Convention, which shall extend to dissimilar goods or services.
However, the court dismissed Airbus Deutschland's arguments and declared to allow the preliminarily approved trademark AIRBUS under application no. 1343997 to move to the registration stage because the court found that Airbus Deutschland could not prove that its trademark AIRBUS became famous in China before the filing date of the opposed trademark prior to July 1998, although it is known that AIRBUS had been used in China before July 1998, the problem was that there was no evidence to substantiate this brand name was so widely known in China that it had become well-known until the filing date of the objected trademark. The court also asserted its point of view that when considering whether a trademark is well-known or not, attention should be paid to the reputation of the trademark by the time when the junior trademark was filed.
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