Recently, we win the first instance of administrative litigation on trademark invalidation. In this case, the plaintiff once filed an invalidation request against the trademark in dispute filed by the third party which is identical to the plaintiff’s prior registered trademark. But CNIPA made a decision of maintaining the validity of the trademark in dispute. Hence, our firm, on behalf of the plaintiff, brought an administrative litigation against CNIPA’s decision with the Beijing Intellectual Property Court. The court made the first instance judgment (not yet in force) holding that the registration of the trademark in dispute in a certain good violated Article 30 of the Trademark Law. The court also recognized the plaintiff’s trademark as a well-known trademark, which leads to the registration of the trademark in dispute being a violation of Article 13 (3) of the Trademark Law in other goods, and ruled the CNIPA to make a new decision.
The plaintiff also uses the cited trademark in this case as its trading name. As early as 2019, the third party was found using the same text of the cited trademark and the trading name of the plaintiff as its unregistered trading name to carry out business activities. Then, the plaintiff entrusted us to send a warning letter of infringement to the third party. After our attorneys making several rounds of negotiations, the third party issued a written guarantee to our firm, admitting its use of the trading name to carry out false publicity and other related infringements that misled the public and promised to cease the infringement.
Our attorney submitted evidence relating to the aforementioned infringing act by the third party and considerable evidence materials concerning the popularity of the cited prior registered trademark by the plaintiff. We claimed that the cited trademark of the plaintiff constitutes a well-known trademark; the disputed trademark is a copy and imitation of the well-known trademark of the plaintiff, and its registration and use will mislead the public and damage the interests of the plaintiff, which violates Article 13 (3) of the Trademark Law; we further stated that the trademark in dispute constituted similar trademark with the cited trademark on a certain good that approved for use, which violates the provisions of Article 30 of the Trademark Law, etc.
The First Instance Court supported our claim, holding that the registration of the trademark at question on a certain good violated Article 30 of the Trademark Law; recognized the plaintiff’s cited trademark as well-known trademark, and established that the trademark at question is identical in terms of the text, pronunciation, meaning, etc., with the plaintiff's cited trademark, which constituted the copy and imitation of the cited trademark. The cited trademark owned by the plaintiff is a fanciful trademark possessing high distinctiveness. Thus, it is hard to determine the third party’s application for the trademark in dispute is out of good faith given that it is exactly the same as the cited trademark. Moreover, the address of the third party fell into the major area where the cited trademark by the plaintiff is used, which reveals the bad faith of the third party in registering such trademark. In addition, the use of the trademark in dispute can easily lead the relevant public to mistakenly associate it with the plaintiff's cited trademark, thereby taking a free ride of the goodwill of the plaintiff's well-known trademark and causing damage to the plaintiff's interests. Therefore, the third party’s registration of the disputed trademark in other goods violated the circumstance prescribed in Item (3) of Article 13 of the Trademark Law.
Now, the defendant--CNIPA has filed an appeal, and the first instance judgment has not yet taken effect.
The plaintiff also uses the cited trademark in this case as its trading name. As early as 2019, the third party was found using the same text of the cited trademark and the trading name of the plaintiff as its unregistered trading name to carry out business activities. Then, the plaintiff entrusted us to send a warning letter of infringement to the third party. After our attorneys making several rounds of negotiations, the third party issued a written guarantee to our firm, admitting its use of the trading name to carry out false publicity and other related infringements that misled the public and promised to cease the infringement.
Our attorney submitted evidence relating to the aforementioned infringing act by the third party and considerable evidence materials concerning the popularity of the cited prior registered trademark by the plaintiff. We claimed that the cited trademark of the plaintiff constitutes a well-known trademark; the disputed trademark is a copy and imitation of the well-known trademark of the plaintiff, and its registration and use will mislead the public and damage the interests of the plaintiff, which violates Article 13 (3) of the Trademark Law; we further stated that the trademark in dispute constituted similar trademark with the cited trademark on a certain good that approved for use, which violates the provisions of Article 30 of the Trademark Law, etc.
The First Instance Court supported our claim, holding that the registration of the trademark at question on a certain good violated Article 30 of the Trademark Law; recognized the plaintiff’s cited trademark as well-known trademark, and established that the trademark at question is identical in terms of the text, pronunciation, meaning, etc., with the plaintiff's cited trademark, which constituted the copy and imitation of the cited trademark. The cited trademark owned by the plaintiff is a fanciful trademark possessing high distinctiveness. Thus, it is hard to determine the third party’s application for the trademark in dispute is out of good faith given that it is exactly the same as the cited trademark. Moreover, the address of the third party fell into the major area where the cited trademark by the plaintiff is used, which reveals the bad faith of the third party in registering such trademark. In addition, the use of the trademark in dispute can easily lead the relevant public to mistakenly associate it with the plaintiff's cited trademark, thereby taking a free ride of the goodwill of the plaintiff's well-known trademark and causing damage to the plaintiff's interests. Therefore, the third party’s registration of the disputed trademark in other goods violated the circumstance prescribed in Item (3) of Article 13 of the Trademark Law.
Now, the defendant--CNIPA has filed an appeal, and the first instance judgment has not yet taken effect.