Xiaomi secures partial TM win before EU court
Chinese electronics company Xiaomi managed to secure a partial win before the EU General Court yesterday, March 12, in a case involving a figurative trademark.
Yesterday, the General Court annulled part of a European Union Intellectual Property Office’s (EUIPO) appeal board’s decision in a dispute involving Xiaomi and Spanish company Dudingen Develops.
Dudingen Develops applied to register a figurative sign as an EU trademark in November 2014, covering class 9 (for goods including electrical cables and power adaptors) and class 18 (rucksacks).
However, in an opposition filed in March 2015, Xiaomi claimed the applied-for mark was too similar to its own trademark, a figurative version of the letters ‘m’ and ‘i’, covering classes 9 and 38.
Later that same year, the EUIPO’s Opposition Division upheld the opposition in part, a decision that Dudingen Develops appealed against.
In September 2016, the EUIPO’s Fourth Board of Appeal handed down its ruling, annulling the Opposition Division’s decision in part, where the division had rejected the opposition for ‘battery jars; ignition cables; starter cables for motors’ in class 9. Registration for those goods was rejected.
The board also found that the remaining goods covered by the applied-for mark were not similar to the goods covered by Xiaomi’s mark so dismissed the rest of Xiaomi’s appeal.
Xiaomi appealed against the decision, arguing that the General Court should annul the part of the appeal board’s decision where it found that there was no likelihood of confusion for the remaining goods in class 9 and 18.
The Chinese company argued the contested goods in class 9 and the goods covered by its own mark are similar as they have the same nature and end-users, and they all come within the wider category of ‘electronic devices, accessories thereto and parts thereof’, a contention the EUIPO disagreed with.
Yesterday, General Court sided with the EUIPO on this point, concluding that the contested goods are accessories and spare parts that have a different nature and purpose to electronic devices.
However, the court went on to hold that goods including ‘electrical cables’, ‘connection cables’ and ‘plug adaptors’ were similar to the goods covered by Xiaomi’s trademark as they are aimed at the same public, share the same distribution channels, have a common usual commercial origin and are complementary.
Xiaomi also claimed that the class 18 goods were similar to its own goods, arguing that the appeal board’s decision was vitiated (meaning the legal validity of the decision was impaired) by a failure to state reasons, as the Board of Appeal didn’t rule on the similarity between ‘rucksacks; small rucksacks; bags for climbers’ and electronic devices.
The court sided with Xiaomi, finding that the decision was vitiated by a failure to state reasons and annulling the appeal board’s finding for the goods in class 18.
Xiaomi was ordered to bear two-thirds of its costs and to pay two-thirds of the EUIPO’s costs, with the EUIPO picking up the rest. The remainder of the action was dismissed.
Xiaomi’s representatives Thomas Raab and Christian Tenkhoff, a partner and senior associate based in Taylor Wessing’s Munich office, said: “It’s good news that the court annulled the decision of the Board of Appeal. Clearly, the court did not agree with the board’s very restrictive approach to comparing the products at issue.”
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