China’s CNIPA Releases List of Trademark Opposition and Invalidation Cases for Guidance
Published 30 May 2024
Yu Du
On 13 May 2024, the China National Intellectual Property Administration (CNIPA) published ten trademark opposition and invalidation cases from 2023 in the China Intellectual Property News. These cases aim to strengthen the legal awareness around trademark law through case studies. This article will focus on two foreign trademark cases: the invalidation of trademark “DEMARSON” Registration No. 47589108 and eight invalidation cases against series “PLATINUM” trademarks including Registration No. 52695434.
Case 1: Invalidation of Trademark “DEMARSON” Registration No. 47589108
Basic Facts:
The applicant, Demarson Inc (Demarson), claimed that their original trademark “DEMARSON” had gained a certain level of recognition. The disputed trademark, registered by Quanzhou Hongkang E-commerce Co., Ltd. (Quanzhou Hongkang), was identical to Demarson’s trademark. Demarson further claimed that the Quanzhou Hongkang’s legal representative and shareholders had set up multiple companies and registered over 600 trademarks, many of which copied other brands. This behavior was deemed to violate Article 44(1) of the Trademark Law, which prohibits trademark registration obtained by other improper means.
Decision:
Upon review, the CNIPA found that the disputed trademark was identical to the applicant’s previously registered corporate name, indicating a deliberate attempt to copy. Moreover, the respondent and its 18 associated companies had filed numerous applications for trademarks that were similar to well-known commercial logos and designer names, without providing reasonable explanations. Additionally, these entities were involved in trademark agency services, suggesting a systematic scheme to hoard and imitate trademarks. The CNIPA concluded that this conduct disrupted the order of trademark registration and violated Article 44(1) of the Trademark Law.
Significance:
This case demonstrates the CNIPA’s commitment to cracking down on trademark hoarding and reputation exploitation. By invalidating the disputed trademark and placing the registrant and its affiliated companies under close scrutiny, the CNIPA reinforced its regulatory framework and showcased its use of information systems to monitor and combat malicious registrations.
Case 2: Invalidation Cases against Series “PLATINUM” Trademarks including Registration No. 52695434
Basic Facts:
The applicants, Orlen International Trading (Suzhou) Co., Ltd. and its parent company Polski Koncern Naftowy Orlen Spolka Akcyjna (PKN Orlen), an oil products company based in Polan, claimed that they owned the prior trademark rights to “PLATINUM & Design”. They also claimed that the respondent, Orlen Lubricants (Wuxi) Co., Ltd., had registered seven “PLATINUM” series trademarks without authorization, violating Article 15(2) of the Trademark Law. Additionally, the respondent and its affiliates were accused of registering numerous trademarks similar to other lubricant brands, demonstrating a pattern of bad faith registration in violation of Article 44(1).
Decision:
The CNIPA reviewed the evidence, including the prior Polish trademark registration, product information on the Chinese subsidiary’s website, and the business scope and trademark registration activities of the respondent and its affiliates. The evidence revealed a history of business relations between the respondent’s affiliates and the applicants, indicating an intention to hoard and imitate well-known trademarks. The CNIPA concluded that the registration of the “PLATINUM” series trademarks constituted bad faith under Article 15(2) and Article 44(1) of the Trademark Law.
Significance:
These cases highlight the CNIPA’s thorough approach in handling complex trademark disputes involving multiple related entities. By connecting related cases and considering the full scope of evidence, the CNIPA effectively addressed the issue of bad faith registrations, ensuring fair competition and justice.
Comment
These cases illustrate the importance of maintaining vigilance against trademark hoarding and malicious registrations. The CNIPA’s rigorous scrutiny and willingness to connect dots across related cases set a strong precedent for safeguarding intellectual property rights. The decisions also underscore the necessity for companies to diligently monitor their trademarks and take proactive steps to protect their brand identities against infringement. These decisions will undoubtedly encourage more transparent and fair practices within the trademark registration system.