photo from: 699pic

Ford Auto’s Mustang is well- known to many in China as Yema, which means wild horses. Nowadays there has been a new development on the trademark dispute between Ford Mustang and Yema Auto.

Recently Beijing Municipal Higher People’s Court has filed a final verdict affirming that the registered trademark Ford Mustang (No.9817109) by Ford Motor Co. (Ford Auto) constitutes a similar mark of the trademarks of Yema Auto and Wild House Image of Yema possessed by Yema Auto Co. Ltd. (Yema Auto). Therefore the court rejected the appeal by Ford Auto, cancelled the verdict of maintaining the disputed trademarks by the former Trade Review and Adjudication Board(TRAB) and ordered the TRAB to re-adjudicate on the trademark dispute.

The register application on the disputed trademark was submitted by the Ford Auto on August 9, 2011 to the TRAB and was preliminarily examined for approval as the 12th type of automobile goods on July 6, 2012. On August 22, 2012, Sichuan Auto Industry Group (Former name of Yema Auto) raised an objection to the disputed trademark while the TRAB approved registering. The disputed trademark was published on the TRAB trademark publication defined as the 12th type of automobile goods on April 21, 2015 expiring to October 6, 2022.

On May 5, 2015, Yema Auto applied for request for invalidation on the TRAB publication of the disputed trademark, claiming the disputed trademark constituted a similar mark to its No.143167 trademark Wild House Image of Yema (Quoted Trademark 1), No.6911636 trademark Yema Auto (Quoted Trademark 2), No.6988613 trademark Yema Qiche (Quoted Trademark 3) and No.9353208 Yema and Its Image (Quoted Trademark 4) of former authentic rights and damaged its prior right of possessing Yema trademark.

On perusal, it was judged by the TRAB on April 29, 2016 that since the word Ford possessed by Ford Auto had more notability in practice and advertisement, the quoted trademarks were different from the disputed one to some degree, the early registered No.4058275 English trademark Ford Mustang could also be translated into Ford Yema which had the same meaning of Wild House and the proof provided by Yema Auto couldn’t support the standpoint on misconception of sources by the public, the disputed trademark didn’t constitute a similar mark to the quoted provided by Yema Auto. Further, there was no clear definition of infringed fields besides the copyrights by Yema Auto. In conclusion, the TRAB maintained the verdict of the dispute.

Yema Auto was dissatisfied with the verdict of the TRAB and submitted an administrative litigation to Beijing Intellectual Property Court.

According to the trial by Beijing Intellectual Property Court, the disputed trademark has included the notable recognition of Wild House which exists in the Quoted Trademark 1 and 3, and there has been a robust subjective cognitive relationship between the prior quoted trademark and relative public. It can’t be presumed the disputed trademark Ford Mustang has remarkable characteristics differing from the Quoted Trademark 1 and 3 according to its notability and the public might be misled to think any specific bond between the two companies in reverse confusion for the quoted and disputed trademarks both used on the same or similar type of goods. And the claim raised by Yema Auto on the disputed trademark damaging its priority right lacks legal foundation. In summary, the court canceled the verdict by the TRAB for the first-instance decision and ordered the TRAB to re-adjudicate.

Not satisfied with the first-instance decision, Ford Auto filed an appeal to Beijing Municipal Higher People’s Court claiming that the similar trademark statement was not founded for the fact the disputed trademark included well-known Ford sign, Ford Auto possesses the exclusive right to Ford Mustang, and Ford Yema is the direct translation of the word Ford Mustang, therefore the coexistence of the quoted trademarks and the disputed trademark would not mislead relative public.

In perusal, Beijing Municipal Higher People’s Court judged that the disputed trademark included the notable recognizable part Wild House which also included by the Quoted Trademark 1 and 3. And the public might be misled to think any specific bond between the two companies for the quoted and disputed trademarks both used on the same or similar type of goods. While Ford Auto stated that the direct translation between Ford Mustang and the disputed trademark and the great notability of the Ford trademark will distinguish itself from the less well-known quoted trademarks on same or similar type of goods, the court regarded the notability of trademarks as just part of consideration. According to the court’s statement, it would damage the legal trademark right of the company which possessed the early registered trademarks to allow another notable right holder to reapply on the basis of the former trademark by adding other factors, different registered trademarks with their exclusive rights should be isolated, and therefore it couldn’t be founded that the trademark exclusive right of Ford Mustang by Ford Auto was the definite reason of being approved to apply for the disputed trademark.

In summary, Beijing Municipal Higher People’s Court rejected the litigation of Ford Auto and affirmed the original judgement for the last instance.

February 2, 2019

Source: CIP News