Acting for ANHEUSER-BUSCH Inbev Harbin Brewery Company Limited, we, Janlea Law Firm filed a lawsuit with the Beijing Intellectual Property Court as the plaintiff against the request for ruling on invalidation of trademark of “梅河小麦王”(Chinese Characters In Pinyin Mei He Xiao Mai Wang) made by China National Intellectual Property Administration. 

The Beijing Intellectual Property Court overturned the ruling made by China National Intellectual Property Administration and broke through the Classification Table of Similar Goods and Services, to hold that the use of the trademark “梅河小麦王”(Chinese Characters In Pinyin Mei He Xiao Mai Wang) on the designated goods ‘Beer; Malt Beer; Wort I(fermented beer)’ and the use of the trademark “小麦王”(Chinese Characters In Pinyin Xiao Mai Wang) on the approved goods ‘water (beverage)’ constituted similar goods, two sides’ trademarks constituted similar trademarks on the same or similar goods, and the disputed trademark shall be declared for invalidation. 

Profile of the case：

WANG Mancai, the third party, has applied for the registration of the disputed trademark “梅河小麦王”(Chinese Characters In Pinyin Mei He Xiao Mai Wang) with No. 20653114 on Class 32 on 14th July 2016, and the trademark has approved for the registration on 14th March 2019, and to be approved to use on the goods ‘beer; malt beer; wort (fermented beer); water (beverage); mineral water (beverage); almond milk (beverage); soda water; non - alcohol standard tea; Cola; plant drinks’

The plaintiff has filed an application for invalidation of the disputed trademark on 3rd June 2019. On May 27, 2020, China National Intellectual Property Administration (hereinafter referred to as the defendant) made Shang Ping Zi No. [2020] 0000142070, Ruling on the Request for Invalidation of Trademark No. 20653114 of “梅河小麦王”(Chinese Characters In Pinyin Mei He Xiao Mai Wang)  (hereinafter referred to as the defendant's Ruling), invaliding the disputed trademark on water (beverage) and other goods.

The plaintiff has refused to accept the ruling made by the China National Intellectual Property Administration, and filed a lawsuit to the court on 14th July 2020, arguing that the goods ‘Beer; Malt beer; wort I (fermented beer)’ approved for the use by the disputed trademark and the water (beverage) approved for the use by the cited trademark constitute similar goods. Moreover, the third party has the subjective malice of plagiarizing the trademarks of the plaintiff's prior well-known trademarks “小麦王”(Chinese Characters In Pinyin Xiao Mai Wang) and “哈尔滨小麦王”(Chinese Characters In Pinyin Haerbin Xiao Mai Wang). The disputed trademark shall be invalidated.

China National Intellectual Property Administration held that:

The use of the disputed trademark “梅河小麦王”(Chinese Characters In Pinyin Mei He Xiao Mai Wang) on approved goods ‘Beer; Malt beer; Wort I (fermented beer)’ and the use of the cited trademark 1 “小麦王”(Chinese Characters In Pinyin Xiao Mai Wang) on all approved goods did not constitute similar goods, as a result, the disputed trademark and cited trademark 1did not constitute similarity which referred to the article 30 of Chinese Trademark Law, accordingly, the disputed trademark shall be maintained on parts of the goods.

Beijing Intellectual Property Court held that:

The disputed trademark is composed of the words  “梅河小麦王”(Chinese Characters In Pinyin Mei He Xiao Mai Wang), the cited trademark 1 is composed of the words  “小麦王”(Chinese Characters In Pinyin Xiao Mai Wang), the characters of the disputed trademark completely contains the characters of the cited trademark 1, and the two trademarks have constituted similarity. On the question of whether the goods "beer, malt beer, and wort (fermented into beer)" approved for use by the disputed trademark and the water (beverage) and other goods used in the approved use of the cited trademark constitute similar goods, the court held that considering the function, use, production department, sales channels and other factors of the goods, the two are relatively close and should be deemed to constitute similar goods. Therefore, the disputed trademark and the cited trademark 1on the above goods have constituted similar trademarks on similar goods. The plaintiff's claim has factual and legal basis, and was supported by the court.

Analysis and Comments to the Case: 

The case focuses on whether the goods of "beer, malt beer, wort I (fermented beer)" approved to be used by the disputed trademark“梅河小麦王”(Chinese Characters In Pinyin Mei He Xiao Mai Wang) and the water (beverage) approved to be used by the cited trademark “小麦王”(Chinese Characters In Pinyin Xiao Mai Wang) constitute similar goods. According to the Classification Table of Similar Goods and Services, the relevant goods do not constitute similarity. Therefore, in the litigation stage, we should actively seek for the previous effective judgment that the relevant goods constitute similarity and the malicious evidence of the third party, and try to persuade the court to break through the classification table.

In this case, during the litigation stage, the plaintiff submitted to the court a large number of prior effective judgments made by the Supreme People's Court, Beijing High Court and Beijing Intellectual Property Court, which all held that beer, ginger beer, malt beer constitute the identical or similar goods as water (beverage), which include the Beijing Intellectual Property Court's invalidation judgment of the trademark “汇润小麦王” (Chinese Characters in Pinyin Hui Run Xiao Mai Wang) No. 10491607, which has taken effect.

Meanwhile, the plaintiff also submitted to the court the third party malicious plagiarism, imitation of the plaintiff's well-known trademark of the effective evidence, Including malicious third person plagiarize the plaintiff “哈啤” (Chinese characters in Pinyin Ha Pi) trademark of the plaintiff has won a prior orders, the third person in the actual market malicious copy the plaintiff “哈尔滨小麦王” (Chinese characters in Pinyin Ha Er Bin Xiao Mai Wang” well-known goods packaging web printing, the Supreme People's Court ruled that the goods of the plaintiff  “哈尔滨小麦王” (Chinese characters in Pinyin Ha Er Bin Xiao Mai Wang” has strong significance and high visibility.

At the end, the court comprehensively considers the similar degree of the goods and trademarks, as well as the third person malicious, the court broke through the classification table, to hold that the goods "beer, malt beer, wort I (after fermentation beer)" that are approved to use by the disputed trademark and the goods water (beverage) approved to use by cited trademark constitute similar goods, and then, the disputed trademark is declared for invalidation.