Renault's Chinese design patent No. ZL202130363449.5 for their MOBILIZE vehicles was invalided by CNIPA on August 2, 2022 on the basis of conflicting with other's prior trademark right.

1223260a.jpg

Chinese auto maker "Human Horizon" requested CNIPA to invalidate this design patent. Human Horizon owns a Chinese car brand "HiPhi" and owns a Chinese trademark No.33004007 1223260b.jpg in class 12 with approved goods including vehicles. This trademark, being 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 on the rear side of the trunk.

CNIPA is of the opinion that in Renault's logo 1223260c.jpg and Human Horizon's trademark 1223260b.jpg both give the relevant public the overall impression of a line segment being in the center and separating a bracket. In addition, the angle of the pattern varies depending on the viewing angle. Therefore, CNIPA found that 1223260c.jpg is similar to 1223260b.jpg and the use of a pattern similar to a registered trademark on goods of same class constitute conflict of prior trademark right. According to Article 23.3 of China Patent Law, any design for which a patent right is granted must not conflict with the lawful 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 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 decided that 1223260c.jpg and 1223260b.jpg are not similar. However, Renault's Chinese trademark application for 1223260c.jpg has been rejected by 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 the Human Horizon's position in enforcing its own trademark 1223260b.jpg.

Generally speaking, applicants for design rights and their attorneys need to evaluate whether it is a good practice to include any trademark in the drawings of a design application. Unless the use of a trademark has significant contribution to the overall visual effect of the design instead of merely serving the function of a trademark, it is best not to include any trademark in the drawings of a design application, to avoid potential risks of trademark disputes.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

Mr Stephen Yang
IP March
1506 Satellite Building, 63 Zhichun Road
Haidian District
Beijing
CHINA
Tel: 1062966619
Fax: 1062983448
E-mail: yyang@ipmarch.cn
URL: www.ipmarch.cn

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