Design patent invalidated by an earlier trademark – Trademark

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Renault’s Chinese design patent No. ZL202130363449.5 of Renault for their MOBILIZE vehicles was invalidated by CNIPA on August 2, 2022 based on a conflict with the prior trademark right of others.

1223260a.jpg

Chinese automaker “Human Horizon” has asked CNIPA to invalidate this design patent. Human Horizon owns a Chinese car brand “HiPhi” and owns a Chinese brand No.33004007
1223260b.jpg in class 12 with approved goods, including vehicles. This mark, used on HiPhi cars, was registered on December 7, 2019 and remains valid until December 6, 2029.

Renault’s design application no. 202130363449.5 was filed on June 11, 2021. As shown in the drawings of this design patent, the logo 1223260c.jpg is used in the center of each wheel and at the rear of the trunk.

The CNIPA is of the opinion that in the Renault logo 1223260c.jpg and the mark of Human Horizon 1223260b.jpg both give the relevant public the general impression of a line segment lying in the center and separating a parenthesis. In addition, the angle of the pattern varies depending on the viewing angle. Consequently, the CNIPA found that 1223260c.jpg is similar to 1223260b.jpg and the use of a trademark-like design on goods of the same class constitutes a conflict of prior trademark rights. According to Article 23.3 of the Chinese Patent Law, any design for which a patent right is granted shall not conflict with the legitimate rights acquired by any other person before the filing date. Therefore, CNIPA declared Renault’s Chinese design patent ZL202130363449.5 invalid.

1223260c.jpg is a logo that Renault uses for its MOBILIZE vehicles. Renault and Human Horizon had trademark disputes over the similarity between 1223260c.jpg and 1223260b.jpg in Germany in 2021. A German court has decided that 1223260c.jpg and 1223260b.jpg are not similar. However, Renault’s Chinese brand application for 1223260c.jpg was rejected by the CNIPA. In hindsight, it would have been prudent for Renault to avoid including the logo
1223260c.jpg in the design drawings, as it is well aware of Human Horizon’s position in applying its own brand 1223260b.jpg.

In general, design rights applicants and their attorneys should consider whether it makes sense to include a trademark in the drawings of a design application. Unless the use of a mark contributes significantly to the overall visual effect of the design rather than merely serving the function of a mark, it is best not to include a mark in the designs of a drawing request, in order to avoid the potential risk of trademark disputes. .

The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.

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