Recently, the Beijing Intellectual Property Court made first instance judgment (which has come into force), dismissing the plaintiff's claims and upholding the sued decision for two administrative disputes over trademark invalidation with a Shanghai-based investment management center as the plaintiff against the defendant, China National Intellectual Property Administration (CNIPA). We represented the Japanese company as the third party in two cases.
Our firm represented the third party in both cases, claiming that the plaintiff violated Paragraph 2 of Article 15 of Chinese Trademark Law by squatting the third party’s prior used trademark known in its business dealings with the third party, as well as violating Paragraph 1 of Article 44 of Chinese Trademark Law by applying for the registration of a large number of trademarks that are identical or similar to others’ prior used well-known brands.
In the two cases, the plaintiff neither directly signed the sales agency contract or other documents with the third party, nor had direct cooperation with the third party in its name, but rather through its holding affiliated companies to enter into contracts and business transactions with the third party. That is to say that the two parties did not constitute a direct agency relationship, so the circumstance where any agent or representative registers, in its or his own name, the trademark of a person for whom it or he acts as the agent or representative without authorization therefrom stated in Paragraph 1 of Article 15 of the Trademark Law, is not applicable here. However, our attorneys collected a large amount of evidence, including the holding relationship between the plaintiff and its affiliate company, the overlapped shareholder information of the affiliated company, the relationship between the plaintiff and its affiliated company showed in the emails correspondence between the affiliated company and the third party. Based on the above evidence, we emphasize that the relationship between the plaintiff and the third party constitutes “other relationship other than those prescribed in Paragraph 1” stipulated in Paragraph 2 of Article 15 of the Trademark Law, and the plaintiff has the possibility of knowing the prior used trademark of the third party, which belong to the circumstances where the applicant is fully aware of the existence of the trademark but still applying for registration without authorization. Our claims are finally supported by the Beijing Intellectual Property Court.
Our firm represented the third party in both cases, claiming that the plaintiff violated Paragraph 2 of Article 15 of Chinese Trademark Law by squatting the third party’s prior used trademark known in its business dealings with the third party, as well as violating Paragraph 1 of Article 44 of Chinese Trademark Law by applying for the registration of a large number of trademarks that are identical or similar to others’ prior used well-known brands.
In the two cases, the plaintiff neither directly signed the sales agency contract or other documents with the third party, nor had direct cooperation with the third party in its name, but rather through its holding affiliated companies to enter into contracts and business transactions with the third party. That is to say that the two parties did not constitute a direct agency relationship, so the circumstance where any agent or representative registers, in its or his own name, the trademark of a person for whom it or he acts as the agent or representative without authorization therefrom stated in Paragraph 1 of Article 15 of the Trademark Law, is not applicable here. However, our attorneys collected a large amount of evidence, including the holding relationship between the plaintiff and its affiliate company, the overlapped shareholder information of the affiliated company, the relationship between the plaintiff and its affiliated company showed in the emails correspondence between the affiliated company and the third party. Based on the above evidence, we emphasize that the relationship between the plaintiff and the third party constitutes “other relationship other than those prescribed in Paragraph 1” stipulated in Paragraph 2 of Article 15 of the Trademark Law, and the plaintiff has the possibility of knowing the prior used trademark of the third party, which belong to the circumstances where the applicant is fully aware of the existence of the trademark but still applying for registration without authorization. Our claims are finally supported by the Beijing Intellectual Property Court.