The Cross-Class Similarity Determination of Trademarks for Lubricating Oil and Motorcycles Finally Leads to the Invalidation of 12-Year Registered Trademark by the Supreme Court in the Retrial!

June 18, 2021

Case Summary:

Huai'an Hairun Petrochemical Co. Ltd. (Hairun Company) applied for registration of the disputed trademark on goods "Industrial oil; Motor oil; Emulsifying oil; White oil; Solvent oil; Lubricating oil; and Fuel oil" and the like in Class 4, on June 6, 2005, and was approved on November 14, 2008.

Huaihai Holding Group Co. Ltd. (Huaihai Company) cited its prior trademark No. 4489518 "淮海HUAIHAI and device" registered on goods "Electric bicycles, Electric tricycles, Motorcycles" in Class 12 and trademark No. 313958 "淮海HUAIHAI江苏徐州 (JIANGSU XUZHOU) and device" on goods "Motorcycles" in Class 12 and filed an invalidation application of the disputed trademark.

Upon examination, the Trademark Review and Adjudication Board (the TRAB) determined that the disputed trademark constitutes confusingly similar trademark to the cited trademark which were used on the same or similar goods. Thus, the disputed trademark was ruled to be invalid. Hairun Company was dissatisfied with the decision and filed an administrative litigation with the Beijing Intellectual Property Court, the court of first instance, requesting to revoke the TRAB’s decision. After examination, the Court announced that although the disputed trademark was composed of the character "淮海", which was completely contained in the two cited trademarks and constituted a similar trademark, the goods "Industrial oil; and Lubricating oil" and the like approved for use by the disputed trademark and the goods approved for use by the cited trademark had great distinctions in function, use, marketing channel and consumer group, and they did not constitute similar goods. The judgment of the first instance revoked the TRAB’s decision and maintained the disputed trademark. Huaihai Company appealed to the Beijing High People's Court, the court of second instance, but the court decided to uphold the judgment of the court of first instance.

Huaihai Company refused to accept the second-instance judgment and appealed to the Supreme People's Court for a retrial, and entrusted Unitalen to participate in the retrial proceedings on its behalf. Unitalen lawyers collected the relevant evidence and made arguments, which were finally adopted by the Supreme Court.

The Supreme Court Judgment:

Both the courts of the first and second instances held that the lubricating oil and motor oil in Class 4 designated by the disputed trademark and the goods such as tricycles, and motorcycles in Class 12 designated by the two cited trademarks of Huaihai Company did not constitute similar goods, which did not violate Article 28 of the original Trademark Law. After the trial, the Supreme Court held that lubricating oil and motor oil are spare parts for tricycles and motorcycles, often sold in motorcycle parts markets or garages. The two were connected to a certain degree and determined as similar goods. The judgments of the first and second instances were revoked, and the original TRAB's ruling to invalidate the disputed trademark was upheld.

Typical Significance:

The retrial judgment in this case clarified that when determining whether the disputed trademark and the cited trademark constitute similar trademarks on similar goods, and whether it is likely to cause confusion and misunderstanding by the relevant public, in addition to the similarity degree of the trademark logo and the similarity degree of the goods, factors such as the distinctiveness and popularity of the cited trademark, as well as the subjective intention of the applicant for the disputed trademark should also be considered. Regarding the similarity degree of goods, even if the related goods belong to different classes in the Table for Differentiating Similar Goods and Service, they shall be determined as similar goods if they are used by collocation and are highly related in terms of function, use, consumer group, and marketing channels, etc. In the meantime, the relevant comments on the defense of stabilizing the market order in the retrial judgment are of reference significance for similar cases.