Astonishing error cases when registering a trademark

The Chinese company Hisense and the German Bosch Siemens company were parties to a protracted trademark infringement battle on the subject of a near identical mark being used for similar goods. The first to register its mark for the sale of home electronic goods was Hisense, which registered its mark in China in 1993. Following the company’s success in the Chinese market, Bosch Siemens sought to register the HiSense mark in Germany and the EU, also for home electronic goods. The two signs were nearly identical, with the only difference being the upper case ‘S’ used by the German company, and the lower case ‘s’ for the Chinese company.

When the Chinese Hisense started exporting home appliances to Europe and Germany, Bosch Siemens sued for infringement of its registered HiSense trademark. The renown of the Hisense group in the home electronics market was prominent, but did not match that of Bosch Siemens, which may be said to have formed part of the rationale for the German company attempting to take over the trademark. However, the battle continued, with Hisense not willing to part with the brand under which it had sold goods in more than 100 countries. Eventually, in 2005, the two businesses reached a settlement deal, with Bosch Siemens ostensibly not having considered the way that would be held by the Chinese company, despite it holding a smaller share of the global market – Bosch Siemens transferred the mark to Hisense.

Although it cannot be conclusively known, it may be proffered that, if the HiSense brand had been registered for goods other than home electronics, the Chinese company may not have been so successful in its potential counter-claim for infringement. Indeed, despite the near identical nature of the marks, if the secondary mark had been registered for, say, a taxi services company, the goods or services offered under the two marks may be so different as to defeat any potential claims of infringement.

This case operates as a warning to businesses to consider the market for trademarks and other IP rights as global, and not merely at a national or regional level – a mistake which has cost Bosch Siemens its mark and potentially some of its reputation.

ASDA, a supermarket chain in the UK, sought to live dangerously in its registration of a chocolate bar under the name Puffin, which was intended to confuse consumers as to the potential association with the pre-existing branded Penguin chocolate bar. The similarity of the names and branding of the two products, in conjunction with being registered for use on identical products – chocolate-coated sandwich biscuits – had meant that ASDA severely miscalculated its risk, and was liable for infringing the pre-existing Penguin brand.

The similarity of every one of the legal aspects of the brands meant that ASDA had erred in its assumption that no liability would arise. Potentially, if the Puffin brand had been registered and used with a different food product, for example, crisps instead of chocolate bars, this may have differentiated the brands enough to save ASDA from liability.

A brief exploration of these two cases should serve to warn businesses of the importance of maintaining a global mindset, as well as considering all aspects of a brand during registration, as these aspects add together and can potentially tip the scales in favour of infringement if the requisite caution is not taken.