In a trademark invalidation dispute between the Plaintiff HEINEKEN BROUWERIJEN B.V. ("Heineken"), the Defendant CNIPA, and the third-party Wenliang Pan, the Beijing Intellectual Property Court has revoked the CNIPA's decision and ordered the CNIPA to deliver a new decision.
| Disputed Mark | Cited Mark 1 | Cited Mark 2 |
 Reg. No. 38696030 Class 32 |
 Reg. No. G678138 Class 32 |
 Reg. No. 3289981 Class 32 |
The two issues in this case were: first, whether the Disputed Mark and the Cited Mark constituted similar trademarks used on identical or similar goods as stipulated under Article 30 of the Trademark Law; and second, whether the Disputed Mark violated the obtaining registration by deception or other improper means clause under Article 44(1) of the Trademark Law.
Regarding issue one, the court found that since the Cited Mark 3 ("Heineken & Design") was not timely renewed, it no longer constituted an obstacle to the prior right of the Disputed Mark. The Disputed Mark's approved goods and the goods approved under the Cited Mark 1 and 2 completely overlapped and constituted identical or similar goods. The Disputed Mark consisted of the Chinese character "He Ni Ken in Chinese" and the Cited Mark 1 and 2 were both composed of the English letters "HEINEKEN". Although the Disputed Mark and the Cited Marks are not identical in appearance and composition, "He Ni Ken in Chinese" and "HEINEKEN" were not inherent vocabulary and were both fabricated words. According to the evidence submitted by Heineken for the translation of "HEINEKEN", "He Ni Ken in Chinese" is the phonetic translation of the English word "HEINEKEN". Considering the evidence in the case can prove that the Cited Marks has obtained certain fame before the Disputed Mark's registration date on beer related goods, the third party and the plaintiff were business operators in the same industry, and the third party had engaged in "HEINEKEN" brand beer parallel import business, its application for registration of the Disputed Mark was not a coincidence. Therefore, the co-existence of the Disputed Mark and the Cited Marks in the market would easily cause confusion and misidentification to the relevant consumers. The Disputed Mark and the Cited Marks constituted as identical marks that were used on identical or similar goods.
Regarding issue two, since the Disputed Mark has been declared invalid under Article 30, and arguments based on Article 44(1) were no longer applicable.
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