Lamborghini is one of the world's top luxury cars and is considered a symbol of the rich. Its "Bullfighting" trademark is even more famous at home and abroad. However, not long ago, Lamborghini suffered a setback in an administrative lawsuit related to the "Bullfighting" trademark.

It turns out that a company in Ruian City applied to the State Trademark Office to register a trademark on April 24, 2009, designated for use in insurance, banking, financial services, art valuation, real estate agency, brokerage, guarantee, Raise charitable funds, trusts, pawns and other services.

Lamborghini raised objections to this, but neither the Industrial and Commercial Administration nor the Trademark Review and Adjudication Board supported it, so Lamborghini sued the court, but was also not supported in the first and second instances.

The Beijing High Court pointed out in the second instance that the service category specified by the opposed trademark is significantly different from the cited trademark of Lamborghini in terms of service content, service objects, service methods, product functions and consumption objects, etc. Do not belong to the same or similar goods or services, and do not constitute identical or similar trademarks used on the same or similar goods or services. Furthermore, Lamborghini was unable to prove that it had prior copyright ownership of the relevant logo.

So, what kind of inspiration does this administrative lawsuit bring to people?

First of all, it is undeniable that the objected car logo and the trademark confirmed by Lamborghini in this case are There are great similarities in graphic composition.

However, as we all know, for ordinary trademark infringement comparisons, in addition to proving that the trademarks are similar, it is also necessary to prove that the categories of goods and services used by the trademarks are the same or similar, thus causing confusion among relevant consumers.

In this case, the insurance, banking, financial services, art valuation, real estate agency and other services designated for use by the opposed trademark are different from the trademarks explicitly cited by Lamborghini in the lawsuit (including motor vehicles, etc. ) are obviously different in terms of service content, service objects, service methods, product functions and consumption objects, etc., are not the same or similar goods or services, and do not constitute the transfer of the same or similar trademarks used on the same or similar goods or services.

Secondly, if Lamborghini claims that the registered trademark in question is a well-known trademark, can the purpose of litigation be achieved?

The author believes that the answer is still not optimistic. For non-well-known common trademarks, the similarity or similarity of product categories is the premise and basis for determining trademark infringement. The commodity category requirements must be compared within the scope of the commodity category for which the trademark is registered. The reason is that the goodwill carried by an ordinary trademark will not extend beyond the scope of the registered category due to the closed nature of the consumer group or the limited business field. The goodwill of "brand expansion" is formed, and the trademark law only protects ordinary registered trademarks within the scope of the approved product categories.

If a common trademark generates sufficient goodwill through use outside the category of goods for which it is registered, it may constitute a well-known trademark. Only then does the protection of trademark rights need not consider the product category. Therefore, an important feature of registered well-known trademarks is "cross-class protection", that is, the protection of well-known trademarks is no longer restricted by the types of identical or similar goods. Cross-class protection effectively expands the protection scope of well-known trademarks and is therefore often used to prevent others from registering and using identical or similar trademarks. However, the cross-class protection of well-known trademarks is not unlimited. A common misunderstanding when enterprises use well-known trademark strategies is to equate "cross-class protection" with "full class protection". They believe that as long as the fact that a trademark is well-known is recognized by the court, it can be protected in any category without distinction. As a result, we give up the proof of the correlation between product categories, consumer groups, consumption channels, etc., and often end up with the conclusion that the two product categories are too far apart to extend protection, thus "losing our care".

In fact, "cross-class protection" only refers to breaking through the restrictions on the same or similar types of goods under ordinary trademark protection, but it does not reach the level of full class protection. For example, for the product category of shirts, windbreakers can be regarded as similar goods, and leather shoes can also be regarded as similar goods under certain conditions (consumers overlap, consumption channels are the same, and sales places are the same). This is why ordinary trademarks can be subject to certain restrictions in terms of category. General scope of protection. For well-known trademarks, this scope can be appropriately extended to categories such as wallets and watches.

However, generally speaking, it cannot be considered that its scope can be extended to fields such as computer communications, automobile manufacturing, and transportation.

Therefore, the so-called "different or similar" in terms of product categories means that the product categories can be crossed, but this "cross-category" must not exceed the reasonable scope.

Judging from this case, even if a well-known trademark is claimed. The author personally believes that it is difficult to cross-category into the service category specified by the opposed trademark.

In this case, well-known companies can consider using the full class registration method to protect their brands. For example, in practice, many well-known universities are often well-known for their education and scientific research capabilities. In order to prevent unscrupulous companies from rushing to register their school names and thereby deceive consumers, these universities register the logos and fields related to the school names on all product categories. trademark. For example, Zhejiang University has fully registered its school emblem, school name, etc. in 45 categories, thus obtaining a complete and systematic brand protection.

Finally, regarding “trademark copyright protection”.

In recent years, there has been an increasing number of trademark objections that use prior copyrights to prevent others from registering their trademarks. Specifically, when citing Article 31 of the Trademark Law, which stipulates that "application for trademark registration shall not infringe the existing prior rights of others," the claim is that the trademark applied for registration by others infringes upon one's own copyright in previously completed works.

Today, a large number of case practices have formed relatively mature rules for the determination of the originality of prior works in trademark opposition. Therefore, Lamborghini's assertion of prior copyright in the "Bullfighting" graphic in this case is appropriate from a conceptual point of view, but attention must be paid to the preparation of evidence. Well-known brand companies should retain the initial evidence of brand graphics and text design (such as sketches, electronic files, etc. at various design stages), and conduct copyright registration or time stamp certification in a timely manner. Only by being well prepared can you take the lead in future trademark litigation. Graphic trademark