Konica Minolta Holdings Inc. V. Trademark Review And Appraisal Board Of The State Administration For Industry And Commerce Of The People¡¯s Republic Of China

Konica Minolta Holdings Inc. V. Trademark Review And Appraisal Board Of The State Administration For Industry And Commerce Of The People¡¯s Republic Of China, Etc. Re: Trademark Administrative Dispute

Konica Minolta Holdings Inc. (Minolta) applied on 18 January 1985 for the registration of the trademark ¡°MEINENGDA¡± and successfully registered such trademark (Register No. 238453) (the referenced trademark) on 30 November 1985, which was approved to be used on ¡°photocopy machines and microfilm readers as well as toners and colour developing reagents used within photocopy machines¡±. On 10 November 1997, Jinfeng Paint Factory filed an application with the Trademark Office to register the trademark ¡°MEINENGDA¡± (No. 1248053) (the disputed trademark), which was to be used on its paint products. The products on which the referenced trademark was used and those on which the disputed trademark was used were not similar so that the Trademark Review and Appraisal Board (TRAB) decided in the No.2051 ruling on 4 June 2007 that the registration of the disputed trademark was approved. Minolta disagreed with this ruling and filed a lawsuit with the Beijing No. 1 Intermediate People's Court.

Minolta claimed that: 1. The TRAB failed to evaluate correctly the impact of the popularity of the referenced trademark in this case. The products on which the referenced trademark and disputed trademark were used were optics-related materials, and were in their nature very close to each other. ¡°MEINENGDA¡± was the Chinese version for their trademark ¡°Minolta¡± (which had been recognized as a well-known trademark in Japan), and since they had completed a wide range of registration in China for the trademark ¡°MEINENGDA¡± and had been using the same in China for a long time, the trademark ¡°MEINENGDA¡± should have been identified as a well-known trademark. 2. The TRAB had granted to the referenced trademark a protection at the well-known trademark level. 3. The referenced trademark was an original creation of Minolta and was of high distinctiveness, and the application for the registration of the disputed trademark was obviously a malicious act.

The TRAB argued that: the evidences submitted by Minolta proved that the referenced trademark was used earlier on the designated products and had certain popularity, but failed to support the Minolta¡¯s claim that the referenced trademark had become a well-known trademark before the date of application for the disputed trademark, and the products on which the disputed trademark and referenced trademark were used were obviously different. Therefore, Minolta was unable to prove that the application for the registration of the disputed trademark may cause damage to the interests of Minolta.

It was held that: 1. the question of similar products should be determined by whether, according to the general knowledge of the relevant public, the products in question were the same or similar in terms of their functions, purposes and raw material, or whether the relevant public would believe that the products in question were connected or caused confusion. In this case, the products on which the referenced trademark and disputed trademark were used were obviously different in terms of their functions, purposes and other features. Therefore, they were not similar products.

2. The evidences submitted by Minolta proved that the referenced trademark had certain popularity, but failed to prove the fact that the referenced trademark had become a well-known trademark before 10 November 1997 on which the application for the registration of the disputed trademark was filed.

Based on the above reasoning, the claim of Konica Minolta Holdings Inc. was dismissed.



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