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Sophia XIAO
Trademark Department
Linda Liu & Partners

I. Information of the Disputed Trademark

Disputed Trademark:


　

Note: “陆虎” is the corresponding Chinese for “LANDROVER”.

Registration No.: 1535599
Application Date: November 10, 1999
Registration Date: March 7, 2001
Registrant: Geely Holding Group
Validity: March 7, 2011 ~ March 6, 2021 (renewed)
 
II. Information of the case

Plaintiff: Land Rover 【British automobile manufacturer】
Defendant: Trademark Review & Adjudication Board of State Administration for Industry and Commerce
The Third Party: Geely Holding Group 【Chinese automobile manufacturer】
 
First instance court: Beijing No. 1 Intermediate People’s Court
Hearing date of first instance: March 17, 2011
Judgment date of first instance: April 22, 2011
 
Current status: under second instance trial (Geely appealed.)

Relevant Laws & Regulations: Art. 31 of China Trademark Law
 
III. Summary of the case

The third party, Geely Holding Group (hereinafter referred to as “Geely”) filed the application No. 1535599 for the dispute trademark “”, and the designated goods cover subclasses 1203 and 1208 of Class 12, including “Motorbikes”, “Automobiles”, etc.
 

The plaintiff, Land Rover, requested for dispute cancellation against the disputed trademark “” on April 16, 2004 based on the following reasons: “陆虎” is the Chinese transliteration of Land Rover’s famous trademark “LANDROVER”. Geely, as an automobile manufacturer, preemptively

registered “” trademark in 1999 which disturbed the economic order of automobile industry, and caused confusion of trademarks among consumers. Such act should be forbidden according to the laws.
 
The TRAB made the decision on July 19, 2010, maintaining the registration of the disputed trademark, and the reasons are as follows: the evidences Land Rover provided were not sufficient to prove it had advertised in Chinese market initiatively. Neither could it prove that the mark had already achieved certain influence through the use thereof before the application date of the disputed trademark.
 
Afterwards, the plaintiff was not satisfied with the decision TRAB made, and filed a lawsuit on August 30, 2010 before Beijing No. 1 Intermediate People’s Court.
 
On April 22, 2011, Beijing No. 1 Intermediate Court made the first instance judgment, canceling the dispute decision on the trademark “陆虎” made by the TRAB, and requesting the TRAB to make decision anew.
 
【Reference Information】

① The plaintiff Land Rover filed the application for the cited trademark “” on October 8, 1957, designating goods of subclass 1202 of Class 12. The trademark was approved for registration and renewed, and the current validity is from December 1, 2008 to November 30, 2018. The designated goods include “all kinds of buses”, “vehicles”, etc.
 
② Since Geely registered the trademark “” earlier, Land Rover filed the trademark application for “”, which is the Chinese transliteration of “” on April 4, 2003 (in Class 12, Registration No. 3514202). This trademark was finally approved for registration on September 7, 2011 after opposition and opposition review (Registration Publication No. 1278). The validity thereof is from October 14, 2004 to October 13, 2014.
 
IV. Claims of Each Party in the Lawsuit of First Instance

●　Claims by the plaintiff Land Rover
 

①Land Rover is a world well-known automobile manufacturer with more than 60 years of history, and it has been campaigning and advertising for “陆虎” for a long time in China. It is impossible that Geely, as an automobile manufacturer in the same industry, is unaware of the use situation of “陆虎” trademark. However, although Geely clearly knew about the trademark and relevant industry, media and consumers generally consider “陆虎” is corresponding to the series marks of Land Rover, it still preemptively registered trademark “” in 1999 , which is obviously out of bad faith.
 

②Not only the disputed trademark, Geely also filed and registered some other identical or similar famous brands in automobile industry, including “” (“宝马” therein is the Chinese translation of German auto brand “BMW”), “” (“捷豹” therein is the Chinese translation of British auto brand “JAGUAR”), “” (“汗马” therein has the same pronunciation of the general Chinese translation for the US auto brand “HUMMER”, etc.. From such fact, it could be seen that Geely has the obvious and consistent bad faith to preemptively register other’s famous trademarks.
 

③“” means “tiger on the land” and it could best express the excellent performance of   “LANDROVER” SUV in cross-country. Furthermore, “陆” is the translation for “LAND”. Geely and Land Rover are both companies in automobile industry, so if Geely uses “” on its SUV, it could easily cause confusion with the trademark “”used by Land Rover currently.

④Land Rover has been using “陆虎” as the Chinese translated trademark for “LANDROVER” since 1996, and submitted about 40 media reports as evidence to prove this fact.

⑤Land Rover submitted copies of the automobile registration documents issued by relevant State Department, in which “陆虎” was used as the Chinese trademark for “LANDROVER”.

 
●　Claims by the defendant TRAB

①The evidences that Land Rover submitted are all media reports other than the initiative use of “陆虎” by Land Rover itself. Land Rover did not submit any evidence to prove its initiative advertising or activity planning. As for the initiative advertising, Land Rover could not submit any advertisement contract, invoice, etc. to prove its own advertising.

 
●　Claims by the third party Geely

①The evidences that Land Rover submitted are all media reports other than the initiative use of “陆虎” by Land Rover itself. Land Rover did not submit any evidence to prove its initiative advertising or activity planning.

②There are a lot of Chinese translations for “LANDROVER”, for example, “兰德罗孚”, “路华”, etc. “陆虎” is merely one of them, addressed by media and auto fans for “LANDROVER”.

 
V. Judgment Made by the First Instance Court

①The 41 copies of media reports and comments that the plaintiff submitted include professional auto newspapers, publications and magazines. It could prove that, before the application date of the disputed trademark, the Chinese characters “陆虎”, as the Chinese name of “LANDROVER”, had already established the only corresponding relationship with the right owner BMW at that time.

②Before the application date of the disputed trademark, the Chinese trademark “陆虎” had already achieved certain influence among the relevant public through the use in Chinese market. The third party Geely, as a professional automobile manufacturer, should have known the corresponding relationship between “陆虎” and “LANDROVER” as well as their reputation in the industry. Therefore, the act that Geely preemptively registered “陆虎” trademark with clear knowledge is wrong.

 
Such act of the third party violated “application for trademark registration shall not by any unfair means preemptively register a trademark which has already been used by another person and of certain influence” prescribed in Art. 31 of China Trademark Law.

Therefore, Beijing No. 1 Intermediate Court made the first instance judgment to cancel the dispute decision on trademark “陆虎” made by TRAB and request TRAB to make decision anew.
 
【Reference Information】

After the court hearing, the chief judge of this case, Mr. Yadong RAO, expressed the following comments.
 

①The issue of this case is that Geely and TRAB claimed that Land Rover did not initiatively use the “陆虎” trademark.
 

The news reports and comments could prove “陆虎” has been widely recognized among the relevant public as the Chinese name of “LANDROVER”, and it has established the only corresponding relationship with the right owner BMW at that time. It could be determined that the mark could indicate the source of goods and the quality of the products.

②Also, besides the disputed trademark, Geely also filed and registered trademarks identical with or similar to the famous trademarks in automobile industry such as “BMW” and “HUMMER”. Such act was obviously out of bad faith, and should not be supported according to the laws.

③According to the laws, if there is no new evidence or grounds, the TRAB shall not make a decision same as that of before, which means Land Rover may be able to get the trademark right of “陆虎”.

 
VI. About the Lawsuit of Second Instance

According to Qianjiang Evening News dated June 11, 2011, Geely was not satisfied with the determination on its preemptive registration out of bad faith and already appealed. Currently this case is under the trial of second instance.
 
VII. Our Opinions

In the “伟哥” (Chinese translation for “Viagra”) case years ago, Beijing No. 1 Intermediate Court concluded that the plaintiff failed to prove the media reports were plaintiff’s own advertising, so it could not prove “伟哥” trademark was in actual use. In the judgment of this case, Beijing No. 1 Intermediate Court showed different opinion from that in “伟哥” case, which means the scope of subject of “use” defined in Art. 31 of China Trademark Law has been expanded. And in this case, the court also determined that Geely, as an automobile manufacturer in the same industry, is out of subjective bad faith for its preemptive filing and registration of trademarks identical with or similar to the famous trademarks in automobile industry such as “BMW” and “HUMMER”. From this point of view, we could see that when international brands enter Chinese market, Chinese courts are intending to provide protection.
 
In addition, as a lesson we learn from this case, we could understand that once one’s trademark is preemptively registered by someone else, it will take large amount of time and energy to  stop its registration (filing opposition) or cancel the registered trademark. So it is very important that when a foreign company plans to enter Chinese market, it should file the corresponding Chinese trademark as early as possible.
 
Currently, this case is under the trial of second instance. We will keep paying a close attention on the following development.
 
VIII. Reference
 

（2012）