On May 13, 2024, the Trademark Office of the China National Intellectual Property Administration issued a batch of 10 typical cases regarding trademark oppositions and invalidations for 2023.
The released ten typical cases include five trademark opposition cases and five invalidation cases, which are respectively handled by the opposition department, and the review and adjudication department. Those cases cover a wide range of issues, which do not only include trademark protection for intangible cultural heritage, the dancing or book title, the name right, the well-known trademark, but also the issues of malicious trademark hoarding, violation by trademark agency, and so on.
Among them, there are a few cases that are worth of your attention:
Trademark opposition against No. 60596619 “白水畈”
In this case, the opponent is an association of a turnip named “白水畈”, and it filed an opposition against No. 60596619 “白水畈” in relation to “fresh vegetables”, and so on, in Class 31 by a company in Wuhan, on the main grounds that 1) the opposed party massively applied for trademarks that were irrelevant to its operation industry and lacked real intention to use; 2) the opposed party’s squatting of the geographical indication agricultural product name previously used by the opponent was easy to mislead the public. The opposed party denied the claims.
Upon examination, the CTO held that the opposed party had applied for registration of more than 180 trademarks in various goods and services, and there are many trademarks that are identical or similar to geographical indications, as well as those similar to the names of scenic spots or villages. Also, the opponent has proved with evidence that the “白水畈萝卜 (Bai Shui Fan turnip)” had been used as a geographical indication in Hubei province prior to the application of the opposed trademark. The CTO considered that the opposed party was not a local plant and it was not reasonable for it to register the said geographical indication as a trademark, and its registrations had the intention of squatting public resources and hoarding trademarks which constituted a bad faith application that had no intention to use and disturbed the trademark registration management order.
In a word, the CTO disapproved of the registration of the No. 60596619 “白水畈” in accordance with Article 4 of the PRC Trademark Law.
Comment:
Article 4 of the PRC Trademark Law 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 case of a bad faith trademark registration application that is not for the purpose of use, it shall be rejected.” Among them, the part that “in case of bad faith trademark registration application that is not for the purpose of use, it shall be rejected” was added to the current Trademark Law in 2019 for the purpose of regulating the trademark registration order and preventing registration that are not aimed at use. Given the geographical indications related registration history of the opposed party mentioned above, this case is a typical case of using Article 4 by the CTO to combat the act of squatting public resource, especially the rush-registration of geographical indication for illegal commercial gain.
Trademark invalidation against No. 47589108 “DEMARSON”
In this case, the invalidation applicant “DEMARSON INC” is the owner of the trademark and trade name “DEMARSON”, and it filed the invalidation on the main grounds that 1) the trademark in dispute “DEMARSON” is identical to its solely created and famous “DEMARSON”, and 2) the legal representative and shareholders of the respondent company established multiple companies and applied for more than 600 trademarks, including some copycatting others’ trademarks, and such applications far exceeded its need for operation, which was bad faith hoarding and free-riding other’s reputations.
Upon examination, the CTO held that it is not a coincidence that the trademark in dispute is identical to the applicant’s prior registered trade name, and there is justification for the respondent and its 18 affiliates to apply to registrations of multiple trademarks that were identical or similar to others’ distinctive logos or designers’ names in various goods and services. In addition, the business scope of the respondent’s affiliates also includes trademark agencies.
Thus, it is concluded that the respondent and its affiliates maliciously colluded to hoard trademarks, imitate others’ trademarks or names, and circumvent the relevant provisions of the PRC Trademark Law, which was not justified and disturbed the trademark registration management order and constituted the circumstance of “obtaining the registration with other unfair means” provided in Article 44.1 of the PRC Trademark Law.
Comment:
On one hand, this typical case shows the trademark/brand owner the importance of investigating the background of any squatter in the case of being rush-registered, as the registration history and other AIC information of the respondent herein and its multiple affiliates are the keys to this successful invalidation. On the other hand, it also shows the CTO’s strict combat against bad faith hoarding and the free-riding of others’ reputation. It is said that the CTO recorded the respondent herein and its 19 affiliates on the key monitoring list.
Trademark invalidations against No. 52695434 “铂金优选” and so on
In this case, the applicant is the sole subsidiary of a petroleum company, POLSKI KONCERN NAFTOWY ORLEN SPOLKA AKCYJNA, which owns the “PLATINUM” (Chinese translation as “铂金”) trademark and licenses the said trademark to the applicant herein. The respondent had a business association with the said petroleum company and applied for seven “铂金” series trademarks without authorization, and its affiliate has also massively squatted other’s lubricant brands.
Upon examination, the CTO held that based on the evidence at hand, such as the prior “PLATINUM” trademarks registered in Poland by the petroleum company above, the distribution relations existed between the petroleum company and the respondent’s affiliate, and so on, it could be proved that the applications and registrations of the “铂金” series trademarks have constituted the circumstances of the rush-registration of others’ prior used marks due to certain affiliations and violated Article 15.2 of the Trademark Law. Further, the CTO considered that the respondent’s affiliates as a business operator in the lubricant field had applied for the registration of multiple trademarks that are identical or similar to others’ lubricant brands and energy companies’ trade names, which obviously had intention of copying and imitating others’ trademarks and constituted the circumstance of “obtaining the registration by unfair means” provided in Article 44.1 of the Trademark Law.
Comment:
This case listed above is actually one of the eight related cases. According to the CTO, it is selected as a typical case on the ground that the CTO did not merely limit to consider the evidence in this case alone, but also those submitted in the other related cases, so that it could have a whole picture of all the relevant facts and therefore delivered a justified result. This is enlightening for the brand owner that it is important to conduct thorough research regarding the involved parties and relevant cases in terms of an opposition or invalidation and present them to the CNIPA, even though some of those facts may seem “irrelevant” to the current case.
Conclusion
According to the CTO, it finished the examinations of 7.196 million trademark registration applications, 153 thousand trademark oppositions, and 373 thousand trademark reviewing cases in 2023; and it has been issuing typical cases regarding trademark opposition and/or adjudication annually on its website. Such issuance provides us with a good opportunity to see the latest developments in the trademark examination practice and obtain useful tips on how to collect evidence and present the case.
The released ten typical cases include five trademark opposition cases and five invalidation cases, which are respectively handled by the opposition department, and the review and adjudication department. Those cases cover a wide range of issues, which do not only include trademark protection for intangible cultural heritage, the dancing or book title, the name right, the well-known trademark, but also the issues of malicious trademark hoarding, violation by trademark agency, and so on.
Among them, there are a few cases that are worth of your attention:
Trademark opposition against No. 60596619 “白水畈”
In this case, the opponent is an association of a turnip named “白水畈”, and it filed an opposition against No. 60596619 “白水畈” in relation to “fresh vegetables”, and so on, in Class 31 by a company in Wuhan, on the main grounds that 1) the opposed party massively applied for trademarks that were irrelevant to its operation industry and lacked real intention to use; 2) the opposed party’s squatting of the geographical indication agricultural product name previously used by the opponent was easy to mislead the public. The opposed party denied the claims.
Upon examination, the CTO held that the opposed party had applied for registration of more than 180 trademarks in various goods and services, and there are many trademarks that are identical or similar to geographical indications, as well as those similar to the names of scenic spots or villages. Also, the opponent has proved with evidence that the “白水畈萝卜 (Bai Shui Fan turnip)” had been used as a geographical indication in Hubei province prior to the application of the opposed trademark. The CTO considered that the opposed party was not a local plant and it was not reasonable for it to register the said geographical indication as a trademark, and its registrations had the intention of squatting public resources and hoarding trademarks which constituted a bad faith application that had no intention to use and disturbed the trademark registration management order.
In a word, the CTO disapproved of the registration of the No. 60596619 “白水畈” in accordance with Article 4 of the PRC Trademark Law.
Comment:
Article 4 of the PRC Trademark Law 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 case of a bad faith trademark registration application that is not for the purpose of use, it shall be rejected.” Among them, the part that “in case of bad faith trademark registration application that is not for the purpose of use, it shall be rejected” was added to the current Trademark Law in 2019 for the purpose of regulating the trademark registration order and preventing registration that are not aimed at use. Given the geographical indications related registration history of the opposed party mentioned above, this case is a typical case of using Article 4 by the CTO to combat the act of squatting public resource, especially the rush-registration of geographical indication for illegal commercial gain.
Trademark invalidation against No. 47589108 “DEMARSON”
In this case, the invalidation applicant “DEMARSON INC” is the owner of the trademark and trade name “DEMARSON”, and it filed the invalidation on the main grounds that 1) the trademark in dispute “DEMARSON” is identical to its solely created and famous “DEMARSON”, and 2) the legal representative and shareholders of the respondent company established multiple companies and applied for more than 600 trademarks, including some copycatting others’ trademarks, and such applications far exceeded its need for operation, which was bad faith hoarding and free-riding other’s reputations.
Upon examination, the CTO held that it is not a coincidence that the trademark in dispute is identical to the applicant’s prior registered trade name, and there is justification for the respondent and its 18 affiliates to apply to registrations of multiple trademarks that were identical or similar to others’ distinctive logos or designers’ names in various goods and services. In addition, the business scope of the respondent’s affiliates also includes trademark agencies.
Thus, it is concluded that the respondent and its affiliates maliciously colluded to hoard trademarks, imitate others’ trademarks or names, and circumvent the relevant provisions of the PRC Trademark Law, which was not justified and disturbed the trademark registration management order and constituted the circumstance of “obtaining the registration with other unfair means” provided in Article 44.1 of the PRC Trademark Law.
Comment:
On one hand, this typical case shows the trademark/brand owner the importance of investigating the background of any squatter in the case of being rush-registered, as the registration history and other AIC information of the respondent herein and its multiple affiliates are the keys to this successful invalidation. On the other hand, it also shows the CTO’s strict combat against bad faith hoarding and the free-riding of others’ reputation. It is said that the CTO recorded the respondent herein and its 19 affiliates on the key monitoring list.
Trademark invalidations against No. 52695434 “铂金优选” and so on
In this case, the applicant is the sole subsidiary of a petroleum company, POLSKI KONCERN NAFTOWY ORLEN SPOLKA AKCYJNA, which owns the “PLATINUM” (Chinese translation as “铂金”) trademark and licenses the said trademark to the applicant herein. The respondent had a business association with the said petroleum company and applied for seven “铂金” series trademarks without authorization, and its affiliate has also massively squatted other’s lubricant brands.
Upon examination, the CTO held that based on the evidence at hand, such as the prior “PLATINUM” trademarks registered in Poland by the petroleum company above, the distribution relations existed between the petroleum company and the respondent’s affiliate, and so on, it could be proved that the applications and registrations of the “铂金” series trademarks have constituted the circumstances of the rush-registration of others’ prior used marks due to certain affiliations and violated Article 15.2 of the Trademark Law. Further, the CTO considered that the respondent’s affiliates as a business operator in the lubricant field had applied for the registration of multiple trademarks that are identical or similar to others’ lubricant brands and energy companies’ trade names, which obviously had intention of copying and imitating others’ trademarks and constituted the circumstance of “obtaining the registration by unfair means” provided in Article 44.1 of the Trademark Law.
Comment:
This case listed above is actually one of the eight related cases. According to the CTO, it is selected as a typical case on the ground that the CTO did not merely limit to consider the evidence in this case alone, but also those submitted in the other related cases, so that it could have a whole picture of all the relevant facts and therefore delivered a justified result. This is enlightening for the brand owner that it is important to conduct thorough research regarding the involved parties and relevant cases in terms of an opposition or invalidation and present them to the CNIPA, even though some of those facts may seem “irrelevant” to the current case.
Conclusion
According to the CTO, it finished the examinations of 7.196 million trademark registration applications, 153 thousand trademark oppositions, and 373 thousand trademark reviewing cases in 2023; and it has been issuing typical cases regarding trademark opposition and/or adjudication annually on its website. Such issuance provides us with a good opportunity to see the latest developments in the trademark examination practice and obtain useful tips on how to collect evidence and present the case.