The "registration through other unfair means" in Article 44 (1) of the trademark law includes the actions of the trademark applicant in rush registering others' trademarks of certain influence in a large scale
Recently, our firm represented the client and won an administrative lawsuit in first instance over the invalidation request against a company's trademark right. The court of first instance decided to revoke the decision of CNIPA on trademark invalidation request, and request CNIPA to make a new decision on the plaintiff's request for invalidation.
In this case, the registrant of the disputed mark, a Shanghai company, had business dealings with the plaintiff's affiliated companies. The cited mark was a brand newly created by the plaintiff during the business dealings. The disputed mark was identical to the plaintiff's cited mark, but the designated goods are different. The application date of the disputed mark was only 6 days later than the cited mark. In addition to the disputed mark, the Shanghai company also rush registered more than 20 trademarks identical to the plaintiff's cited mark.
The difficulty of this case is that the designated goods of the disputed mark and cited mark are different. The plaintiff's existing evidence could only prove that its affiliated company notified the Shanghai company of the establishment of the new brand (the cited mark) in May 2019. But the application date of the disputed mark and cited mark is in February 2019, and the application date of the disputed mark was only 6 days later than the cited mark.
After examination, CNIPA decided that the disputed mark should be maintained.
Our firm represented the right holder of the cited mark to file an administrative lawsuit before Beijing IP Court, requesting the court to revoke the invalidation decision of CNIPA. In the first instance, we emphasized that the third party (Shanghai company) and the plaintiff's Shanghai affiliated company are both located in Shanghai city and have had business contacts. The third party has sufficient conditions and opportunities to access the cited mark. It can be clearly seen from the communication between both parties that the plaintiff's affiliated company acquiesced that the third party is aware of the establishment of its new brand, and the third party also acknowledged this fact in the reply. Moreover, it is obviously no coincidence that the disputed mark is exactly the same as the cited mark. In fact, the third party copied the disputed mark in bad faith. In addition to the disputed mark in this case, the third party also registered a large number of trademarks which are imitations of the plaintiff’s cited mark, which is obviously in bad faith. Moreover, the said trademarks registered by the third party are not related to its business. The third party applied for a large number of trademarks beyond the actual need for use, which showed its subjective intention of hoarding trademarks. The registration of the disputed mark violates the provisions of Articles 44(1) of China Trademark Law.
The court of the first instance held that, in this case, the disputed mark registered and used by the plaintiff in a number of classes is of relatively high distinctiveness. It is obviously no coincidence that the third party as a consulting company applied to register more than 20 trademarks including the disputed mark which are completely same as the previously registered trademark by the plaintiff. Moreover, the third party did not adduce proof that it has actually used the trademarks or it has subjective intention to use the trademarks. Therefore, the registration of the disputed mark could be determined as “registration through other unfair means” stipulated in Article 44(1) of China Trademark Law. This ground claimed by the plaintiff is tenable and should be supported. The relevant determination in the alleged decision was incorrect and the court of first instance hereby made correction according to the law.
Recently, our firm represented the client and won an administrative lawsuit in first instance over the invalidation request against a company's trademark right. The court of first instance decided to revoke the decision of CNIPA on trademark invalidation request, and request CNIPA to make a new decision on the plaintiff's request for invalidation.
In this case, the registrant of the disputed mark, a Shanghai company, had business dealings with the plaintiff's affiliated companies. The cited mark was a brand newly created by the plaintiff during the business dealings. The disputed mark was identical to the plaintiff's cited mark, but the designated goods are different. The application date of the disputed mark was only 6 days later than the cited mark. In addition to the disputed mark, the Shanghai company also rush registered more than 20 trademarks identical to the plaintiff's cited mark.
The difficulty of this case is that the designated goods of the disputed mark and cited mark are different. The plaintiff's existing evidence could only prove that its affiliated company notified the Shanghai company of the establishment of the new brand (the cited mark) in May 2019. But the application date of the disputed mark and cited mark is in February 2019, and the application date of the disputed mark was only 6 days later than the cited mark.
After examination, CNIPA decided that the disputed mark should be maintained.
Our firm represented the right holder of the cited mark to file an administrative lawsuit before Beijing IP Court, requesting the court to revoke the invalidation decision of CNIPA. In the first instance, we emphasized that the third party (Shanghai company) and the plaintiff's Shanghai affiliated company are both located in Shanghai city and have had business contacts. The third party has sufficient conditions and opportunities to access the cited mark. It can be clearly seen from the communication between both parties that the plaintiff's affiliated company acquiesced that the third party is aware of the establishment of its new brand, and the third party also acknowledged this fact in the reply. Moreover, it is obviously no coincidence that the disputed mark is exactly the same as the cited mark. In fact, the third party copied the disputed mark in bad faith. In addition to the disputed mark in this case, the third party also registered a large number of trademarks which are imitations of the plaintiff’s cited mark, which is obviously in bad faith. Moreover, the said trademarks registered by the third party are not related to its business. The third party applied for a large number of trademarks beyond the actual need for use, which showed its subjective intention of hoarding trademarks. The registration of the disputed mark violates the provisions of Articles 44(1) of China Trademark Law.
The court of the first instance held that, in this case, the disputed mark registered and used by the plaintiff in a number of classes is of relatively high distinctiveness. It is obviously no coincidence that the third party as a consulting company applied to register more than 20 trademarks including the disputed mark which are completely same as the previously registered trademark by the plaintiff. Moreover, the third party did not adduce proof that it has actually used the trademarks or it has subjective intention to use the trademarks. Therefore, the registration of the disputed mark could be determined as “registration through other unfair means” stipulated in Article 44(1) of China Trademark Law. This ground claimed by the plaintiff is tenable and should be supported. The relevant determination in the alleged decision was incorrect and the court of first instance hereby made correction according to the law.