Beijing IP Court Protects Unregistered “SPARBAR” from "SPARTECH" Based on “Prior Use” - Article 15.2 of the Trademark Law
Published 3 July 2024
Fei Dang
On February 19, 2024, the Beijing IP Court issued a case study on its official website and introduced a case that protects a UK sports brand, “SPARBAR”, even though it is unregistered in China.
[Case introduction]
On September 14, 2017, an application for No. 26413210 “SPARTECH” (the Disputed Trademark) was applied for registration in relation to “boxing gloves; elbow pads (sporting goods); knee pads (sporting goods)” in Class 28 and was approved for registration on November 21, 2018, with its validity term expiring on November 20, 2028. The Disputed Trademark was approved to be assigned to Nantong Ruisheng Sports Co., Ltd. (Nantong Ruisheng) on October 20, 2020.
On April 24, 2020, SPARBAR LTD (Sparbar) filed an invalidation against the Disputed Trademark above; however, the Disputed Trademark was maintained for registration by the TRAB on the grounds that “the evidence submitted by Sparbar was insufficient to prove that there had been contractual, business, or other relation between Sparbar and Nantong Ruisheng and that the latter had known the existence of Sparbar’s trademark.”
Due to dissatisfaction with the said invalidation decision, Sparbar brought the dispute to the Beijing IP Court and submitted new evidence, which included Notarized Certificates showing notarized content as follows:1. The email suffix of Nantong Ruisheng is “@ruilin.com”;2.The correspondence between the legal representative of Sparbar and Tao Xintian. The latter wrote in the emails, including content such as “… You have the use right to SPARBAR trademark, so can we sell the goods with the SPARBAR trademark?” and “If we want to sell the goods online, we need the registration certificate of the SPARBAR brand,” etc.3. In one of the emails sent to Tao Xintian from Sparbar’s legal representative, the email stated “Official Sparbar – The official Sparbar store for boxing, MMA, fitness, and combat sports equipment, offering the best boxing, MMA fitness equipment!”4. Sparbar’s “SPARBAR” trademark was registered in relation to “fitness and sports equipment” in Class 28 in the UK on October 31, 2012.5. In December 2015, many Weibo users forwarded a piece of Weibo issued by “@mmanews-jianke” in which “many people asked where it is sold, it is called #SPARBAR# which can be translated as #实战靶#, UK products; it is unclear if it is sold in China; but the official link is at: official link; it is expensive; 166 pounds for the home version; 349.99 for the professional version”. There was also a “SPARBAR” boxing photo under the said Weibo.
According to the Beijing IP Court, Nantong Ruisheng as a subject that had an indirect business relation with Sparbar, upon knowing Sparbar’s “SPARBAR” trademark, still applied for the similar Disputed Trademark in relation to the same or similar goods, it has violated Article 15.2 of the PRC Trademark Law, and the Disputed Trademark should not be approved for registration. Thus, the Beijing IP Court repealed the said invalidation and ordered the TRAB re-issue a decision.
Nantong Ruisheng brought the case to the Beijing High People’s Court due to dissatisfaction with the first instance judgment above. The Beijing High People’s Court considered as follows: “Prior to the application date of the Disputed Trademark on September 14, 2017, many Sina Weibo users had used the unregistered trademark “SPARBAR” in relation to boxing gloves, etc. to a certain extent, and such use had the function of identifying the source of the goods. The Disputed Trademark is composed of SPARTECH, which is similar to the SPARBAR used by Sparbar in terms of word composition and pronunciation and has constituted similar trademarks in relation to boxing gloves. According to the Notarized Certificates submitted by Sparbar, the business negotiation between the employee of Nantong Ruisheng and the legal representative happened in June 2017 and was prior to the application date of the Disputed Trademark. By this time, Nantong Ruisheng should have known the SPARBAR unregistered trademark used by Sparbar. Under the circumstances, the obtaining of the Disputed Trademark through assignment by Nantong Ruisheng could not be considered good faith. In order to better prevent unduly registering others’ trademarks, there is no obvious mistake in the original judgment to recognize that the Disputed Trademark fell under the circumstances of Article 15.2 of the Trademark Law. Thus, the Court is determined to reject the appeal and maintain the original judgment.”
[Comment]
This is a typical case that shows the protection of an unregistered trademark in accordance with Article 15.2 of the Trademark Law: “Where a trademark application is identical or similar to the other party’s unregistered trademark with prior use on the identical or similar goods, and where the applicant is aware of the existence of such other party’s trademark because the applicant has contractual, business, or other relationships with the other party beyond that provided in the preceding paragraph, if such other party raises an opposition, the trademark shall be rejected for registration.”
According to the court, when it comes to applying the said Article 15.2, the “prior use” mentioned herein should be the use provided in the Trademark Law within China, and there is no need to consider the fame of the other party’s trademark.
More specifically speaking, such prior use should be authentic use in the circulation field, which can be reached by the relevant public, especially consumers, and can have the function of identifying the source of the goods. In this particular case, the evidence of the Weibo content, which contained the “SPARBAR” and its official link, and the boxing glove photo showing the “SPARBAR” played a key role in recognizing its prior use in China in this case. It is worth noting that although such Weibo was forwarded by the Weibo users other than being issued by Sparbar itself, the Court considered that such forwarded Weibo in nature was an advertising promotion that was not against Sparbar’s will, and the relevant public could establish an association between the SPARBAR braded boxing gloves and Sparbar and then identify the source of the goods. Thus, such use was in the sense of the Trademark Law.
Further, as long as the trademark applicant acknowledges the other party with which a certain association had prior use of the said trademark, it has fulfilled the requirement of “prior use”. In other words, it does not require such a prior used trademark to obtain a certain degree of fame within China.
It also needs to be strengthened that the trademark applicant must actually acknowledge that the other party with which there is a certain association has been using the trademark, other than “should have acknowledged” based on deduction. In this case, the advertising promotion on Weibo had established the prior use of the SPARBAR trademark, whereas the correspondence between Nantong Ruisheng and Sparbar had shown that it had acknowledged Sparbar’s SPARBAR trademark and yet still applied for the registration of the similar “SPARTECH” on the same or similar goods, which showed bad faith.
In fact, apart from the case that involved the Disputed Trademark No. 26413210 “SPARTECH” herein, Nanjing Ruisheng also applied for the registration of No. 26358857 “SPARBAR” which also went through the same invalidation and two instances court proceedings as those in this case. Currently, both trademarks rush-registered by Nantong Ruisheng have been invalidated by the TRAB’s re-issued decision.
In conclusion, the Disputed Trademark “SPARTECH” was invalidated due to a combination of factors as follows:1) In accordance with the Trademark Examination and Review Guide, “where trademarks in foreign words are composed of three or more alphabets, with only individual alphabets different, and there is no overall meaning or no obvious meaning in their meanings, which is easy to cause confusion among the relevant public regarding the source of the goods or services, they should be determined as similar trademarks.” In this case, both the “SPARTECH” and “SPARBAR” share the same first four letters and they are not English word with fixed meanings, when they are both used in relation to boxing gloves, it is easy to cause the relevant public consider them confusing as series trademark. 2) Based on the evidence introduced above, Nantong Ruisheng was obviously in bad faith, as it had contacted with Sparbar for some preliminary business negotiation, which fell into the circumstances provided in Article 15.2 of the Trademark Law.3) As it is mentioned above, Nantong Ruisheng also applied for a registration of “SPARBAR”, which also went through the same invalidation, two instances court proceedings, and it is also invalidated now.
In a word, this case is enlightening that it does not only show us the importance of various factors taken into account when it comes to determining the similarity of trademarks in an invalidation case, but also provide a useful guidance on the circumstances to apply Article 15.2 of the Trademark Law to protect an unregistered trademark.