What issues drive infringements of trademark in automotive industry?

MCompany is a global, diversified technology enterprise that occupies a significant position in the markets of motor vehicle maintenance, repair and automotive care in China, and provides professional automotive after sales products and services.

M Company, following approval from the Trademark Office of the State Administration for Industry and Commerce (SAIC), secured the goods mark “M” for protective plastic overlays for motor vehicles, vessels and similar goods, and adhesive sealants for automotive glass in Class 17, namely the various types of “adhesive films” frequently used on motor vehicles, as well as registering and securing the service mark “M” for vehicle repair services in Class 37.

Certain car care shops that have not been authorised by M Company not only have opted to use M products when providing their services, but also have prominently used M representations directly on their shop signs when providing the services, thereby potentially infringing M Company’s exclusive right to use the M goods and service marks. This column explores significant issues with respect to determining infringements of the exclusive right to use a trademark in the automotive service industry.

Eric Su is a partner and Elena Li is a legal consultant at HFG in Shanghai