Hebei Aulion Heavy Industries LTD filed trademark applications for LOVOL, including stylized word marks 210591 and 210633 and a logo 210639 and 210640. The marks cover harvesters, agricultural machinery, road rollers, diggers, chargers, concrete mixers, bailers, threshers, rice separators, motors that are not for vehicles, agricultural transporters, motorbikes, cranes, horizontal trains, bicycles, electrical vehicles, vehicle engines, lorries with elevators, concrete mixers, tractors and lorries, all in class 12, and were filed in April 2008.
In July 2009, Volvo Trademark holdings AB filed an opposition to the marks.
Statements of case, responses, summations, evidence and hearings were held, and in May 2013, after receiving permission to do so, applicant submitted rulings in other jurisdictions that had allowed the mark to register.
Volvo Trademark Holdings AB has a large number of marks including the word mark 14521 for VOLVO, and 14522 for their logo. These marks were filed back in 1955 and cover vehicles with engines in classes 7 and 12. Volvo Holdings was established in 1927 and provides industrial and domestic vehicles, and via a local distributor, has provided hundreds of thousands of vehicles in Israel. Volvo Holdings advertises widely in Israel and abroad, in both conventional and digital media.
The name VOLVO is prominently displayed in the advertisements. VOLVO invests heavily in R&D and safety and, in their words, “the name Volvo has become synonymous with uncompromising quality, prestige, safety and concern for the environment.” Being a well known mark, Volvo claimed that it was entitled to block the similar LOVOL mark under Section 11(14) of the Trademark Ordinance, as being confusingly similar.
VOLVO also claimed that the goods and distribution channels were identical and were thus not registerable under section 8(a), and that the marks were confusingly similar and thus non-registerable under Section 11(9). Finally, claiming inequitable behavior, VOLVO opposed the mark under section 11(6).
HEBEI AULION HEAVY INDUSTRIES LTD COUNTER-CLAIMS
Hebei Aulion Heavy Industries LTD is a Chinese company with sales of hundreds of millions of dollars, 10,000 workers and tens more engaged in R&D. The marks have been successfully registered in the US, Thailand, EU, China, Australia and Canada. Hebei claims that he marks look different and sound different. Since VOLVO only sells via their own dedicated distribution channel, there is no likelihood of confusion. Finally, the products are expensive and so it is unlikely that anyone would mistakenly purchase the wrong vehicle. As to the charge of inequitable behavior, Hebei claimed to have developed their own machines and that the name was chosen for its Chinese meaning.
The evidence submitted included affidavits of interested parties and of independent experts and market researchers. Interestingly, VOLVO submitted an expert opinion of a Dr Ping Zhaung (Finjan?), who is a researcher in the Dept. of East Asia Studies at Tel Aviv University to explain the name LOVOL in Mandarin Chinese.
In a survey conducted on behalf of Volvo, 56% of 500 Israeli adults identified the LOVOL logo with VOLVO, and 70% identified the LOVOL word mark with VOLVO more than with any other manufacturer.
An expert in visual representation from the Bezalel School of Design who was appointed by VOLVO argued that visually, the words were confusingly similar, as were the two logos. I am unclear as to his alleged competence for so-doing, but the same expert also explained why the marks sound the same.
Ms Cui Wei (Kiwi?), director of Hebei explained how the name was chosen and that it has been used for 12 years. Apparently the name LOVOL is a transliteration of LEIWO using the Pinyin transliteration system and means “Spring Rains that Wet the Ground”, indicating to their customers that the using their equipment would change the world.
Now, for those of you still following, you are, like me, no-doubt wondering how LEIWO becomes LOVOL? Well, according to Ms Cui Wei, hieroglyphically, the first L is that of Lei and the two Os are reminiscent of wheels. The V symbolizes the vehicle chassis and the L is a handle indicating agriculture (maybe it is a scythe or sickle?). The name was also chosen to provide a logical (sic) symmetry.
Having selected this poetic, pleasingly symmetrical Chinese transliteration, it was registered in China in 2004, and subsequently it was successfully registered in other countries, including US, Thailand, EU, China, Australia, Canada, Panama, Equador, Oman, Singapore and the Philippines, where similar objections were overcome.
Dr Ping Zhaung argued that the name was actually Vo-Ren and was a sort of portmanteau word meaning VOLVO and RENAULT, implying a joint venture of the two European manufacturers. He also provided additional evidence that this was the case.
According to Dr Ping Zhaung, would be transliterated through Pinyin into LEIWO. He argued that Latin characters do not have hieroglyphical meanings to Chinese and anyway, the name was directed to foreign purchasers. According to Dr Ping Zhaung LOVOL is not Pinyin at all, but rather Sha Zhai – Chinese copying flattery, implying a Chinese Volvo-Renault.
Having established that the word LOVOL is meaningless in Hebrew, Commissioner Kling ruled that the word could be registered unless it was found to be confusingly similar to Volvo, or bad faith was proven. Commissioner Assa Kling ignored the market survey and the Chinese experts, the creative derivatives and simply analyzed the likelihood of confusion using the good old five pronged triple test. As to appearance, Commissioner Kling rejected the analytical approach of the Bezalel expert and, following Gronis’ approach in the 6658/09 Multilock vs Rav Bareakh appeal, looked at the marks in their entirety.
VOLVO’s logo is round whereas LOVOL’s is square. In LOVOL, the words are emphasized far more. Thus the logos were not deemed confusingly similar. Despite the VOL being common to both marks, the words Volvo and Lovol when considered in their entirety are somewhat similar, but not confusingly so. Unlike the Tal Eden, Tal Emek cheese case, where the word Tal is dominant, in this case, no syllable is dominant and the position of the Vol is at the beginning of one mark and the end of the other.
Noting Judge Ginat’s reversal on appeal of the Killah – Killy decision and the qualitative rather than quantitative similarity of Eve and Eva in the Appeal of the cigarette decision, the Commissioner found the qualitative likelihood of confusion low. (I don’t understand the quantitative, qualitative bit at all). As to the customers and distribution channels, since heavy machinery is bought by professionals, even where someone to arrive at the wrong showroom, he would be considered unlikely to purchase the wrong vehicle.
The Commissioner acknowledged that foreign tribunals might come to different results due to local linguistic and cultural differences and referred to Seligsohn’s opus. Nevertheless, I suspect that he was comforted by the fact that other trademark offices had come to the same conclusion.
In summary, since the marks look and sound different, Volvo vehicles are sold through authorized dealers and since people are careful when purchasing vehicles, and that the registration of the mark would not affect Israeli sales of Volvo vehicles, Commissioner Kling dismissed the case, ruling that the marks were not confusingly similar.
- Following recent court appeals, Commissioner Kling’s ruling seems reasonable.
- If, in their words, “the name Volvo has become synonymous with uncompromising quality, prestige, safety and concern for the environment.” then presumably it is a laudatory and generic term that anyone can use for uncompromising quality, prestige, safety and concern for the environment – which is what many leading companies would claim!
- Does LOVOL imply LOVOL Spring Rains that Wet the Ground, wheels, a vehicle chassis and a sickle to the average Israeli? I’d love to prepare a questionnaire for 500 Israeli adults to answer to clarify this issue.
- I am not sure about VOLVO, but I accept that LOVOL is confusingly similar to Renault when transliterated into Mandarin Chinese by the Pinyin system.
- It is interesting to compare this with the Dewilux paint decision.