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Trademark Review and Adjudication Board of

the State Administration for Industry and Commerce of the PRC

D171439

Adjudication on the Request for the Announcement of the Invalidation of

No. 13809271 “AFS-JEEP EST. 1951 and Graphic” Trademark

SPZ [2017] No. 0000167644

Claimant: FCA US LLC

Attorney: CCPIT Patent and Trademark Law Office

Respondent: Zhongshan Shiqi Yuansheng Garment Factory

Attorney: Zhongshan Shiji Mingyang Intellectual Property Service Co., Ltd.

The Claimant filed an application for the announcement of the invalidation of No. 13809271

“AFS-JEEP EST. 1951 and Graphic: trademark (hereinafter the “Disputed Trademark”) on February 24,

2017. After acceptance in accordance with the law, the Board has constituted a panel for trial according

to Article 6 of the Rules for Trademark Review. Now, the trial has been finished.

Main reasons of the Claimant: I. As one of the largest and most famous automobile manufacturers

around the world, involving many business fields, “JEEP” and “吉普” trademarks, as one of the most

important trademarks of the Claimant, have been legally recognized as well-known trademarks in

vehicles, automobiles, their parts and components, and other commodities because of their strong

significance and high popularity caused by first long-term registration and extensive publicity use. There

is a solid one-to-one correspondence between “JEEP” and “ 吉 普 .” The Claimant requests the

recognition of the “JEEP” trademark and the “吉普” trademark as the well-known trademarks of Category

12 vehicles and auto parts and components in this case. II. The Disputed Trademark is similar to No.

647624 “吉普” trademark (hereinafter the “Reference Trademark 1”) first registered on Category 12

commodities, No. 1030611 “JEEP” trademark (hereinafter the “Reference Trademark 2”), No. 384462

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 “JEEP” trademark (hereinafter the “Reference Trademark 3”), No. 5497172 graphic trademark

(hereinafter “Reference Trademark 4”), No. 5497173 graphic trademark (hereinafter the “Reference

Trademark 5”), No. 581263 “JEEP” trademark (hereinafter the “Reference Trademark 6”) first registered

on Category 18 commodities, No. 12255610 “JEEP” trademark (hereinafter “Reference Trademark 7”),

and No. 12165727 “JEEP SPIRIT ESTD 1941” trademark (hereinafter the “Reference Trademark 8”) in

use on similar or closely related commodities. The Disputed Trademark copied, imitated, and translated

the Claimant's well-known trademark, separating the inherent relationship between each Reference

Trademark and the Claimant, easily leading to confusion, misunderstanding, and dilution of well-known

trademarks of consumers and damaging the legitimate rights and interests of the Claimant. III. With a

malicious purpose, the Respondent applied for the registration of a large number of trademarks,

including “JEEP” and “吉普” of the Claimant and their highly similar trademarks, which seriously disrupts

the trademark registration application order. It constitutes unfair competition and violates the principle of

good faith, easily causing adverse effects. IV. There are precedents that the trademarks in similar

circumstances are not registered. V. In view of the fact that both parties, Reference Trademarks,

evidence, and reasons are basically the same, the Claimant requests a comprehensive trial of the 35

cases of request for the announcement of invalidation. In summary, we apply for the request for the

invalidation of the Disputed Trademark based on Article 7, Subparagraphs (7) and (8), Paragraph 1 in

Article 10, Articles 13, 30, 31, and 44 and other relevant provisions of the Trademark Law of the People’s

Republic of China (hereinafter the “Trademark Law”).

The Respondent submitted the following major evidence (disc) to the Board:

1. Evidence on the use, promotion, popularity, etc. of the Claimant and its trademarks;

2. Information about the registered trademarks of the Claimant in China and overseas area;

3. Adjudication on JEEP trademark as a well-known trademark recognized by countries outside the

region;

4. Page 77 of the Interpretation of the Trademark Law of the People's Republic of China, Directory

for Protection of National Major Trademark prepared by the Trademark Office, the work norms of the

Board concerning the recognition of well-known trademarks, the Interpretations on Several Issues

Concerning the Application of Law to the Trial of Cases of Civil Disputes over the Protection of Famous

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 Trademarks, and 10 cases of typical trademarks transferred to the public security organ by the

Administration for Industry and Commerce in 2010;

5. List of approval and notice of licensing record Jeep (吉普) trademark, license contract filing notice,

sales use and advertising materials of trademark use licensee, and its affiliates;

6. Protection records of Jeep (吉普) trademark;

7. Award and court judgment of another case;

8. Certificate for the change of the Claimant’s enterprise name;

9. Internet search results, website screenshots, and notarial certificates;

10. List of trademarks applied for registration by the Respondent and its affiliates;

11. The Claimant’s complaint information on www.taobao.com;

12. Introduction, related materials, identification and employment, and appraisal documents of

“JEEP” (吉普) trademark used on clothes issued by the Dongtie Jiangying Police Station, Fengtai

Branch of Beijing Municipal Public Security Bureau; and

13. Selection of relevant outstanding trademark agency cases in 2015–2016, relevant media reports

of the trademarks of the parties involved in this case, etc.

The Respondent’s main reasons for reply: I. Most of the trademarks in the Respondent’s name were

subject to malicious objection, announcement for invalidation, or administrative litigation of the Claimant,

which seriously disrupted the Respondent’s normal production and operation order, greatly increased

the cost of protecting the Respondent’s trademark right protection and defense protection, and damaged

the lawful rights and interests of the Respondent. Therefore, the abuse of the administrative system and

the intention to monopolize the use of the words “JEEP” and “吉普” shall be stopped. II. “ASF JEEP” and

“战地吉普” are two clothes brands originally created by the Respondent. They are trademarks of

English–Chinese translations and one-to-one correspondence. With mutually beneficial coexistence, the

two brands generally appear in commercial use and promotion occasions. After a lot of goodwill use and

promotion, it has been well known and widely recognized by many consumers. Its brand strength is

comparable to that of China’s well-known trademarks, and it has formed a stable market order,

consumer groups, and sales channels. III. The Disputed Trademark, in this case, is subject to the

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 defense protection registration of the Respondent’s prior trademark and is greatly different from the

series of trademarks cited by the Claimant in terms of element composition, creative composition, overall

appearance, etc., and is not the same or similar commodities. Therefore, the registration of the Disputed

Trademark for use does not infringe any prior rights of the Claimant and shall not extend the protection

of the Claimant’s Reference Trademarks. IV. The Claimant’s “JEEP” and “吉普” trademarks have been a

common name for “off-road vehicles.” Therefore, the registration and the use of the popular name of the

commodities as part of the trademark is reasonable, and the case that the Claimant accused the

Respondent of malicious imitation of this well-known trademark lacks factual and legal bases. V. There

are a large number of cases concerning the approval for registration and the use of trademarks,

including “JEEP” and “吉普.” VI. As the evidence submitted by the Claimant has been produced for a

long time, it is insufficient to prove the popularity of the Reference Trademark in clothes and other

commodities in the past few years before the application date of the Disputed Trademark, and it also

cannot prove that “JEEP” and “ 吉 普 ” are of one-to-one correspondence on clothes and other

commodities. VII. In view of the fact that both parties, evidence, and defense reasons are basically the

same, the Claimant requests a comprehensive trial of the 35 cases of request for the announcement of

invalidation. In summary, it is requested to maintain the registration of the Disputed Trademark.

On the basis of the Respondent’s defense opinion and above reasons for the announcement of

invalidation, the Claimant believes that the Respondent’s defense reasons are invalid and supplements

the following main reasons for the cross-examination: The Claimant’s “JEEP” and “吉普” trademarks are

not common but significant.

The Respondent additionally submitted the following new evidence (disc) to the Board:

14. The Search Report issued by the National Library Science and Technology Search Center;

15. Auto Catalog from 2007 to 2012 (edition); and

16. The evidence that the “JEEP” and “吉普” trademarks are not common but significant.

The Board has tried and found out that: 1. The Disputed Trademark was submitted by the

Respondent to the Trademark Office for registration on December 26, 2013. After the preliminary review

and the announcement of the Disputed Trademark, the Claimant of the case filed an opposition

application, and the Trademark Office decided that the objection ground was invalid. The Disputed

Trademark was approved for registration on Category 18 animal skin, imitation leather, handbag,
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 backpack, briefcase, luggage set, sports bag, umbrella, alpenstock, belt (harness strap), and other

commodities on November 28, 2016. The exclusive right is valid until June 6, 2025.

2. Reference Trademark 1 was submitted by Chrysler Corporation to the Trademark Office for

application for registration on June 24, 1992, approved for use on Category 12 vehicles, land, air, or

water motor vehicles, and subsequently transferred and changed to FCA US LLC, the Claimant in this

case. The trademark is still within the exclusive right period upon renewal.

Reference Trademark 2 was submitted by Chrysler Corporation to the Trademark Office for

application for registration on March 5, 1996, approved for use on Category 12 automobiles and their

parts and components (excluding tires), and subsequently transferred and changed to FCA US LLC, the

Claimant in this case. The trademark is still within the exclusive right period upon renewal.

Reference Trademark 3 was submitted by Jeep Corporation to the Trademark Office for application

for registration on May 28, 1988, approved for use on Category 12 baby carriages, and subsequently

transferred and changed to FCA US LLC, the Claimant in this case. The trademark is still within the

exclusive right period upon renewal.

Reference Trademarks 4 and 5 were submitted by DaimlerChrysler Corporation to the Trademark

Office for application for registration on July 24, 2006, approved for use on Category 12 automobiles,

and subsequently transferred and changed to FCA US LLC, the Claimant in this case. The trademark is

still within the exclusive right period upon renewal.

Reference Trademark 6 was submitted by Chrysler Corporation to the Trademark Office for

application for registration on January 19, 1991, approved for use on Category 18 cases, and

subsequently transferred and changed to FCA US LLC, the Claimant in this case. The trademark is still

within the exclusive right period upon renewal.

Reference Trademark 7 was submitted by Chrysler Group LLC to the Trademark Office for

application for registration on March 13, 2013, approved for use on Category 18 luggage sets, and

subsequently changed to FCA US LLC in the name of the registrant, the Claimant in this case. The

trademark is still within the exclusive right period upon renewal.

Reference Trademark 8 was submitted by Chrysler Group LLC to the Trademark Office for

application for registration on February 7, 2013, approved for use on Category 18 luggage sets, and

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 subsequently changed to FCA US LLC in the name of the registrant, the Claimant in this case. The

trademark is still within the exclusive right period upon renewal.

3. According to evidence 4 submitted by the Claimant, Directory for Protection of National Major

Trademark prepared by the Trademark Office in June 2000 included the “JEEP” trademark used on the

automobile and its parts and components. The Interpretation of the Trademark Law of the People's

Republic of China published by the State Administration for Industry and Commerce of the PRC

recorded that the “JEEP (吉普)” trademark has become one of the foreign well-known trademarks that

were subject to earlier protection of well-known trademarks in China.

The above fact is proved by trademark archives and relevant evidence.

The Board believes that the legislative spirit of the “principle of honesty and credibility” and relevant

provisions established in Article 7 of the Trademark Law have been embodied in the specific provisions

of the Trademark Law of China. Therefore, the Board will apply specific provisions of the Trademark Law

for review of this case.

Animal skin, luggage set, and other commodities specified for use by the Disputed Trademark are

significantly different from vehicles, baby carriages, automobiles and their parts, and components

(excluding tyres), automobiles, and other commodities approved for use by Reference Trademarks 1 to

5 in terms of functional use, consumption objects, sales channels, etc. Therefore, they are not the same

or similar commodities. As such, it is uneasy for all the Disputed Trademark and Reference Trademarks

1 to 5 to confuse consumers, and the Disputed Trademark has not been similar trademarks on the same

or similar commodities as referred to in Article 30 of the Trademark Law.

The “AFS-JEEP” of the distinctively recognized part of the Disputed Trademark completely contains

the “JEEP” of Reference Trademarks 6 and 7 and the “JEEP” of the distinctively recognized part of

Reference Trademark 8 and does not produce a specific meaning of clear distinction as it is uneasy for

consumers to make distinctions based on overall impression. Therefore, they are similar. Animal skin,

luggage set, and other commodities approved for use by the Disputed Trademark the same as or similar

to luggage sets, fur, and other commodities approved for use by Reference Trademarks 6 to 8 in terms

of functional use, consumption objects, sales channels, etc. Therefore, they are the same or similar

commodities. As all the Disputed Trademark and Reference Trademarks 6 to 8 are used on the above

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 commodities and it is easy to confuse consumers, the Disputed Trademark has been similar trademarks

on the same or similar commodities as referred to in Articles 30 and 31 of the Trademark Law.

The recognition of well-known trademarks follows the principle of on-demand recognition. As the

Board has protected the trademark of the Claimant in line with Articles 30 and 31 of the Trademark Law,

this case is no longer reviewed in line with Article 13 of the Trademark Law.

The Claimant failed to provide sufficient evidence to prove that the Disputed Trademark was

deceptive, and it was insufficient to prove that the registration and use of the Disputed Trademark

caused the relevant public to misidentify its quality and other characteristics or origin. Therefore, the

Disputed Trademark is not applicable to Subparagraph (7), Paragraph 1, Article 10 in the Trademark

Law.

The sign of “being harmful to socialist morals or customs or having other adverse effects,” as

referred to in Subparagraph (8), Paragraph 1, Article 10 of the Trademark Law, mainly refers to the sign

of having negative effects on the public social interest and public order. The reasons stated by the

Claimant, in this case, is inapplicable to the article, and the Disputed Trademark itself does not have

negative or effects on the public social interest and public order in China. Therefore, the Disputed

Trademark is inapplicable to Subparagraph (8), Paragraph 1, Article 10 of the Trademark Law.

The Claimant claimed that the Disputed Trademark was registered by deception or other improper

means of registration, but relevant evidence was insufficient. Therefore, the Board will not support it.

Moreover, Claimant’s other reasons lack factual and legal bases. Therefore, the Board will not

support it as well.

In summary, the Claimant’s reasons for the announcement of invalidation are partially valid.

According to Articles 30 and 31, Paragraphs 1 and 2 of Article 45, and Article 46 of the Trademark

Law, the Board has made the award as follows:

The Disputed Trademark shall be subject to the announcement of invalidation.

If the parties refuse to obey the award, they may submit a case to Beijing Intellectual Right Court within

30 days after receiving the award and the copy of the duplicate of the complaint to the Board, or further

inform the Board in writing at the same time or is no later than 15 days when the complaint is submitted

to the People’s Court.

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 Members of the Panel:

Hong Feiyang

Ma Jing

Jia Yuzhu

Seal: Trademark Review and Adjudication Board of

the State Administration for Industry and Commerce of the PRC

December 13, 2017

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