In a landmark ruling, the Beijing High Court ([2024] Jing Xing Zhong No. 4239), has affirmed the significant reputation of BMW’s trademark for MINI in Class 12.
The judgment, issued on November 28, 2024, invalidated the trademark registration for MINI BEYOND & Design under Registration No. 20866837, owned by Ningbo Beyond Holding Group Co., Ltd. (Beyond Group), covering “bicycles, strollers, push scooters, etc.” in Class 12. The ruling, made public in March 2025, concluded a multi-year dispute between Beyond Group and BMW.
BMW initially filed an invalidation on the basis that Beyond Group’s trademark was similar to BMW’s prior trademark registrations for MINI, MINI COOPER, MINI CLUBMAN, and MINI COUNTRYMAN in Class 12. However, the China National Intellectual Property Administration (CNIPA) did not support the invalidation action and ruled that Beyond Group’s registration was dissimilar to BMW’s cited trademarks.
In February 2023, BMW appealed the invalidation decision to the Beijing Intellectual Property Court and submitted additional evidence to demonstrate the fame associated with BMW’s trademark for MINI in China. Despite BMW’s effort, the first instance court dismissed BMW’s appeal ([2023] Jing 73 Xing Chu No. 3090).
BMW disagreed and filed a further appeal to the Beijing High Court. The Beijing High Court ruled as follows:
The goods covered by Beyond Group’s registration for MINI BEYOND & Design and BMW’s cited marks are identical or similar;
The disputed trademark MINI BEYOND & Design wholly incorporates MINI, the most distinctive feature of BMW’s cited marks. Therefore, the two parties’ marks constitute similar trademarks;
BMW’s MINI mark has acquired a significant reputation through extensive use and promotion by BMW. Coexistence of the two parties’ marks is likely to create confusion among the relevant public about the source of the goods, which violates Article 30 of China’s Trademark Law;
The court declined to evaluate claims under Article 13.3 (well-known trademark protection) and Article 44.1 (bad-faith registrations), as Article 30 has provided adequate protection;
Litigation fees were borne by BMW as it introduced additional evidence during the appeal proceedings, which it had not originally submitted to CNIPA at the invalidation stage.
Finally, the Beijing High Court overturned the first-instance judgment and invalidated Beyond Group’s trademark registration for MINI BEYOND & Design in Class 12. While Chinese courts typically defer to CNIPA’s trademark similarity assessments, this Beijing High Court judgment demonstrates that Chinese courts are willing to intervene when a well-established brand is at stake.
Disclaimer: Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. Law & Research updates are published without comment from Javy Law Firm except where it has taken an official position.
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