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In 2022, the Beijing IP Court (the Court) reversed a TRAB decision that recognized a trademark application among a lot of trademarks registered in a short term that lacked real intention to use and was rejected. Instead, the Court considered that, in this particular case, the applicant can prove with evidence that this application is a continuation and defensive registration of its previous trademark. This case is interesting on the ground that it shows the line between massive applications for the purpose of defensive registrations and no intention to use them at all. In case a brand owner encounters a rejection of its defensive registration due to a reason similar to this case, it knows that it can overcome such rejection by providing sufficient evidence. The rejected application has been approved for registration. For details, please refer to the details below.
Case summary
On July 21, 2021, a company named “Imeik Technology Development Holding Co., Ltd.” (Imeik) applied for a No. 57876806 “嗨体御肌” (Applied-for Trademark) in relation to “medical equipment and appliance; body massage equipment”, and so on, in Class 5. The Applied-for Trademark was rejected by the CTO in November and was brought up for a rejection appeal to the TRAB in December of 2021.
According to the TRAB decision on the rejection of the Applied-for Trademark made on May 23, 2022, although Imeik provided various evidence (e.g. brand introduction, contracts and invoices, product photos, packages, logo design contract and draft, etc.) to prove that it applied for the said trademark for the purpose of use, the TRAB considered that Imeik “applied-for the registration of massive trademarks in a short term, and its submitted evidence were insufficient to prove that it had the real intention to use the Applied-for Trademark, its behavior has exceeded the necessity of normal operation. It falls into the bad faith trademark application that is not intended to be used and has constituted the circumstance provided in Article 4.1 of the PRC Trademark Law”. In a word, the Applied-for Trademark was rejected by the TRAB as well.
Due to dissatisfaction with the TRAB decision above, Imeik brought the case to the Beijing IP Court which reversed the said decision. According to the re-issued TRAB decision issued on January 17, 2023, it cited the Court decision as follows: “Based on the evidence submitted by Imeik at the litigation stage, although Imeik applied for the registration of more than 500 trademarks, its business revolves around the beauty industry, mainly in the "sodium hyaluronate compound solution for injection" goods, the use of the trademark "嗨体" has a certain impact. The disputed trademark was registered in the goods of "pharmaceutical preparations", and the subject of the mark included "嗨体", and the term "御肌 (meaning protecting skin)" was a common descriptive term for the beauty industry, which was a reference to the "嗨体" trademark. It is a continuation and defensive registration of the trademark "嗨体". Therefore, the evidence in the case was insufficient to prove that the registration of the trademark in dispute was a malicious registration application and not for use.”
Comment
This case focuses on Article 4.1 of the PRC Trademark Law which provides that “any natural person, legal entity, or other organization intending to acquire the exclusive right to use a trademark for the goods or service in its or his production or operation activities, shall file an application for the registration of the trademark with the Trademark Office. In the case of a bad faith trademark registration application that is not for use, it shall be rejected”.
Among them, the last part “in the case of a bad faith trademark registration application that is not for use, it shall be rejected” was added in the latest 2019 amendment to the Trademark Law, in order to better cope with trademark hoarding, especially the bad faith registration issues, in the past few years. The addition of the said part to Article 4.1 of the Trademark Law authorizes the CTO to reject an application that is considered to fall into the circumstances of said Article 4.1 during the examination of a trademark application.
According to the CTO database, Imeik has 535 trademark applications/registrations by the date of August 8, 2023, and there were 392 trademark applications during the period between 2021 and 2022. This is probably the reason why the CTO considered the Applied-for Trademark herein, as well as other applications applied during the same period, were rejected in accordance with Article 4.1 of the Trademark Law.
Nevertheless, the Court reverses the said TRAB decision in this particular case, which indicates that abundant applications do not necessarily mean bad faith applications and that it needs to be determined on a case-by-case basis. In fact, the Trademark Examination and Review Guideline issued by the CTO specifies that “the following circumstances do not apply to Article 4 of the Trademark Law: (1) the applicant applies for a trademark that is identical or similar to its registered trademark for the purpose of defense; (2) the applicant pre-applies a certain amount of trademarks for its future business with realistic expectations. In this case, Imeik has already provided various pieces of evidence to prove its registration and use of the “嗨体” trademarks, and the association between “嗨体” and “嗨体御肌” which can be considered series trademarks. This may be why the Court reversed the case, as it considered the evidence submitted by Imeik to fulfill the conditions above.
According to the CTO database, the Applied-for Trademark herein has been approved for registration based on a reissued TRAB decision with its term from June 7, 2023, to June 6, 2033.