Airbus fails to stop registration of AIRBUS for confectionery goods

The Beijing First Intermediate People’s Court has upheld a decision of the Trademark Review and Adjudication Board (TRAB) in which the latter had allowed the registration of the trademark AIRBUS for goods in Class 30 of the Nice Classification (August 6 2009).
Shenyang Yongfeng Food Limited applied for the registration of the mark AIRBUS (and airplane design) in English and Chinese characters for, among other things, “cocoa products, chocolate, cakes and ice cream” in Class 30. Airbus Deutschland GmbH opposed the application based on its international registration for the trademark AIRBUS in Class 28 (toy airplanes). The AIRBUS mark is not registered for goods in Class 12 (airplanes) in China. The TRAB rejected the opposition and Airbus appealed.
The court upheld the TRAB’s decision, stating that:
  • the evidence provided by Airbus was insufficient to establish that its AIRBUS mark was well known in China;
  • the goods covered by the opposed mark were clearly different from Airbus’s goods; and
  • there was thus no risk of deception and confusion among consumers.
Airbus was entitled to appeal the court’s decision to the Beijing High Court within 15 days of the judgment. It is not known if it has done so.
Article 14 of the Chinese Trademark Law sets out the factors that must be taken into account to establish whether a mark is well known:
  • reputation of the mark in the relevant sector of the public;
  • duration of use of the mark;
  • duration, scale and geographical scope of any advertisement for the mark;
  • record of enforcement actions carried out to protect the mark; and
  • other factors contributing to the reputation of the mark.
Generally speaking, only the reputation of a mark used in respect of the designated goods and/or services in China during the three-year period immediately preceding the application date will be relevant. To be considered as well known, a mark must be widely recognized in China - its reputation in other countries is not relevant.
As a copy of the AIRBUS decision is unavailable, it remains unknown exactly why the court held that the evidence was insufficient to demonstrate that the mark was well known. However, the court's conclusion was not surprising, as Airbus relied on its registration for the AIRBUS mark in Class 28 - arguably, the reputation of the AIRBUS mark extends only to actual airplanes, rather than toy airplanes.
One may wonder whether the outcome would have been different had Airbus relied on the reputation of its mark for airplanes in Class 12. Article 13 of the Trademark Law provides that the owner of an unregistered trademark that has been recognized as well known in China may prevent the use or registration of an identical or similar mark in respect of identical or similar goods and/or services if such use or registration is likely to cause confusion among consumers. Therefore, even if the AIRBUS mark had been recognized as well known for airplanes, protection would have extended only to goods in Class 12, but not to goods in Class 30.
However, if the AIRBUS mark had been recognized as well known for goods in Class 28 (or other classes in which it had obtained registration, such as Class 16), Airbus would have been able to prevent the use and registration of an identical or similar mark in respect of dissimilar goods and/or services, provided that such use or registration was likely to mislead consumers and prejudice Airbus's interests.
The Supreme People’s Court's "Opinion on Certain Issues Concerning the Protection of Well-Known Marks in Civil Disputes", issued in April 2009, explained that confusion between two marks will "prejudice the interest" of the owner of the well-known mark where use of the allegedly infringing mark would disparage or dilute the distinctiveness of the well-known mark, or take unfair advantage of the reputation of the mark. Further, confusion will occur when the public may be misled into thinking that goods bearing the allegedly infringing mark originate from the owner of the well-known mark (for further details please see "Opinion on protection of well-known marks in civil disputes issued").
Therefore, the degree of similarity between the goods is a key element in determining whether the public is likely to be misled and whether the interests of the trademark owner are likely to be prejudiced. In the present case, the court rightly found that the goods were too dissimilar to cause confusion among the public.
Howard Tsang and Lilian Shi, Wilkinson & Grist, Beijing and Hong Kong

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