Beijing Higher People's Court recently made the second-instance rule in the trademark dispute case between mini and MINI, revoked the decision made by the Trademark Review and Adjudication (TRAB) under the State Administration for Industry and Commerce, and verdicts of the first-instance made by Beijing First Intermediate People's Court.

Before that, BMW intended to apply for MINI as a registered trademark and to be used on car models. As the "mini" trademark was a prior trademark, so TRAB rejected the registration. The disgruntled BMW then brought the case to Beijing First Intermediate People's Court.

The MINI trademark in question was NO.6169130 trademark, which was applied by BMW for registration in July 2007, certified to be used on Class 28 car model products.

The cited trademark was NO.851498 "mini", which was applied by Guangzhou ZhujiangMeileduo Drinks Company for registration in July 1994, and certified to be used on Class 28 products including toy, game machine. 

Rejected by TRAB, BMW then brought the case to Beijing First Intermediate People's Court.

In October 2009, the Trademark Office under SAIC rejected the registration of MINI trademark as the mini and MINI trademark constituted similar trademark when used on the same product.

At the first instance stage, BMW challenged the "mini" trademark and sought rejection from TMO on the ground that the trademark has not been used in China for three consecutive years. While at the second instance stage, TMO has revoked the "mini"trademark in 2015 as the trademark has not been used for three consecutive years. Beijing First People's Court upheld TRAB's decision, and BMW brought the case to Beijing Higher People's Court.

The court held that, as the "mini" trademark had been revoked, so the prior right was lost. In such case, if the cited trademark was revoked, and trademark in question has not yet registered, the decision should be made according to the principle of changed circumstances. 

(China IP News)