Trademarks of "Horse and Lion"(left) and "Hong Shi Ma" (right)
Hubei Xiangyun (Group) Chemical Co, a large-scale chemical enterprise located in Central China's Hubei province, recently filed a lawsuit in Beijing No 1 Intermediate Court against the Trademark Appeal Board of the State Administration for Industry & Commerce (SAIC) after the authority abandoned the company's fertilizer trademark, which had been registered and used for over 10 years.
An unidentified source with the group said if the Trademark Appeal Board lost the suit, they would ask for compensation according to the State Compensation Law.
Xiangyun's trademark "Hong Shi Ma (registered as in Chinese) and the picture" was first used by the company in 1999 and registered at the Trademark Office of the SAIC in 2003. In 2005, the Trademark Office approved the company's exclusive right to use the trademark.
In July 2008, Germany-based chemical company BASF AG submitted an application to resolve a dispute over its well-known "Horse and Lion" brand (registered as in Chinese and pronounced as Shi Ma Pai) for NPK fertilizers with Xiangyun's trademark "Hong Shi Ma (registered as in Chinese) and the picture." BASF claimed Xiangyun's trademark was imitating its trademark, which was registered on Aug 30, 1987, and was misleading the public, as the two companies were producing similar products in the same industry.
On April 6, 2010, the Trademark Appeal Board decided to abandon Xiangyun's exclusive right to use the trademark "Hong Shi Ma and the picture," as the two trademarks were regarded as having similar Chinese characters when used on similar products.
However, the Hubei-based company held a press conference on May 18 declaring that the two trademarks were different in aspects such as pronunciation, shape, meaning, the overall look, color and structure, so that they could not be defined as similar trademarks. The company said that they had not heard of any case where consumers were confused by the two trademarks.
The company said in addition to "Hong Shi Ma and the picture," it has "Xiangyun" trademark for half of its products, which was evaluated as worth 2.2 billion yuan ($322.22 million). "Hong Shi Ma and the picture" also had big value as it had been used for over 10 years by another half of its products, the company said.
