The World Intellectual Property Organization dismissed a claim by skin care products supplier Beiersdorf AG that a Chinese lube marketer infringed on its trademark through use of the name Beiersdorf.
A WIPO panel found that the German supplier of personal care products only has trademark rights in China in certain categories of goods and that its line of business in China is too dissimilar from that of Tianjin, China-based Beiersdorf Petrochemical.
In June, the German company, which has operated under the Beiersdorf name since 1882, alleged that the Chinese companys website domain name, www.beiersdorfchina.com, bears too much similarity to its trademark.
The complaint, filed under the United States-based Internet Corporation for Assigned Names andNumbers domain name dispute resolution policy, was shot down, as the organization found that the German companys line of business is too dissimilar to that of the Chinese company, and that the former only has trademark rights in certain categories of products in China.
The German Beiersdorf did not respond to requests for comment.
The Chinese company, formerly known as Tianjin Bainian Lubricants, registered the name Beiersdorf Petrochemical in Chinas Trademark Office of the State Administration for Industry and Commerce in 2011 and registered the domain name with Beijing Innovative Linkage Technology in July 2013.
The website presents and sells Beiersdorf Petrochemicals line of hydraulic fluids, power steering fluids, transmission fluids, industrial oils, cutting fluids, engine oils, lubricants, grease, gear oil, fuel additives and more. Although the name is identical, the logos are entirely different, the WIPO noted.
In April 2013, the German company objected to Beiersdorf Petrochemicals trademark registration, entering a complaint to the China Trademark Office. The office overruled the objection, claiming that the names were being used in product categories of completely different functional purposes.
The WIPO panel overseeing the case said it was unable to prove that the Chinese company registered the domain in bad faith. The panelists concluded that the German Beiersdorf brought the complaint in bad faith, however, claiming the complaint was an attempt at reverse domain name hijacking, a practice in which a trademark owner – usually a large corporation or famous individual – attempts to seize a domain name from a rightful owner through false claims.
The dispute did not have any impact on the Chinese Beiersdorf, a company manager not wanting to be identified told Lube Report Asia. The dispute proceedings have finished, and the company has indeed won the intellectual dispute, she said. We will and have always carried out the same business strategies with focus on the domestic petrochemicals market.
Beiersdorf Petrochemical, and its subsidiary, Beiersdorf Petroleum Chemical, were registered on the Shanghai Equity Exchange in July 2014. The company has a research and development collaboration with State Key Laboratory on internal combustion engines at Tianjin University. It operates a 40,000 square meter plant for production of automotive and motorcycle lubricants, industrial lubricants and more.