Recently, Beijing IP Court made a first- instance ruling on the trademark dispute between the U.S. oil giant ExxonMobil and Changsha- based Beimeifu New Material Technology Co., LTD. The Court upheld the verdict by the Trademark Review and Adjudication Board (TRAB) under SAIC which dismissed the registration of trademark "北美孚" to be used on advertising service.

The trademark in question was No.9159238 "北美孚" which was registered by Changsha Julong Management Co., Ltd in March 2011, certified to be used on Category 35 of services including outdoor advertisement, advertising communication and advertising design. After the preliminary publication of the trademark, ExxonMobil challenged the mark to the Trademark Office (TMO) under SAIC based on its reference mark "美孚". On March 5, 2013, the TMO ruled against the registration of the trademark in question on services of outdoor advertisement and advertising communication and affirmed the registration on services of promotion on behalf of others.

Neither the Julong Company nor ExxonMobil was satisfied with the verdict and submitted an application for review to the TRAB respectively. The holder of the trademark in question changed its name to Changsha Beimeifu Company according to the law in 2013.

After hearing, the TRAB decided that the trademark in question should not be used for registration on services such as outdoor advertisement, advertising communication and advertising design.

Disgruntled with the ruling, the Changsha-based company filed an administrative lawsuit to Beijing IPCourt. The Court held that the trademark in question is similar to the reference mark and there is consistency between the two marks regarding the purpose, content, style and object ofservices. Therefore, similarity was constituted which would easily cause confusion among the public. So ordered. 

(by Mao Liguo)

(Source: China IP News)