BASF's Four-year Trademark Seesaw Pending Final Judgment Call

The trademarks case between"Horse and Lion" and "Hong Shi Ma" (Chinese literal meaning Red Lion Horse) has made new progress recently. Disgruntled with the ruling by the Beijing No.1 Intermediate Court, BASF, a European chemical company exhausted the legal avenue by appealing to the Beijing High People's Court recently.

The battle for the trademark of "Hong Shi Ma" dated back to 1987 when BASF, a global chemical giant, filed "Horse and Lion" for trademark registration, certified to be used on products of fertilizer. In November of 2003, Xiangyun Chemical Co Ltd (Xiangyun), a Chinese chemical enterprise, applied for registration of the trademark "Hong Shi Ma" in words and relevant figure (trademark in question) and would obtain the registration  in August, 2005, certified to be used on the same products of fertilizer.

On July 10, 2008, BASF challenged the trademark and sought reversal at the Trademark Review and Adjudication Board (TRAB) under the State Administration for Industry and Commerce (SAIC) on the ground that the two marks "Hong Shi Ma " and "Horse and Lion" were similar in composition and both were certified on the same class of products. BASF claimed that the trademark of "Horse and Lion" had enjoyed high reputations and the dispute trademark of  "Hong Shi Ma " would cause confusion among customs.

TRAB held that similarity between the two trademarks was constituted and the registered trademark of "Hong Shi Ma" violated the ruling of trademark laws. TRAB then rendered its ruling and denied the disputed trademark registration on April 6, 2010. However, unhappy with the ruling by the TRAB over the registration of "Hong Shi Ma" trademark, Xiangyun then brought the TRAB to the Beijing No.1 Intermediate Court. Xiangyun argued that the disputed trademark "Hong Shi Ma" was original and distinctive and did not have the same features as BASF's trademark "Horse and Lion".
The Beijing No.1 Intermediate Court made the first instance judgment and reversed TRAB's decision on the trademark in question. Then the TRAB brought the case to the Beijing High People's Court and stressed its position on similarity. BASF chose to be passive this time.

Beijing High People's Court ruled against the TRAB decision as well. Consequently, the TRAB was forced to validate registration of Xiangyun's disputed trademark "Hong Shi Ma" on September 20, 2011.

Obviously seeing the result differently, BASF fought back by challenging the TRAB decision in an administrative tribunal at the Beijing No.1 Intermediate Court. The court, however, insisted on its support to the TRAB decision.

(China IP News)