The disputed trademark
The cited trademark
1. Basic facts
The No. 3746575 Trademark “施華洛 and picture” (hereinafter referred to as the disputed trademark) was applied for registration on October 9, 2003, and then approved to be registered on January 21, 2006. It is approved to be used on "wedding photography, wedding video recording, photography" and other services in class 41.
The applicant filed an application for invalidation of the disputed trademark on April 27, 2018. The main reason is that the applicant is an internationally well-known supplier of crystal jewelry. Before the application date of the disputed trademark, the trademark "施华洛世奇(SWAROVSKI)" of the applicant has obtained high popularity and is well known among consumers. The disputed trademark maliciously copies and imitates the No. 385013 trademark "施华洛世奇" of the applicant (hereinafter referred to as the cited trademark), and the applicant's interests are infringed. According to the provisions of Article 13 (2) and Article 41 (1) of the Trademark Law of 2001, the invalidation of the disputed trademark was claim for.
2. Views of the China National Intellectual Property Administration
The first paragraph of Article 45 of the Trademark Law stipulates that the time limit for the applicant to declare the registration of a disputed trademark invalid in accordance with Article 13 of the Trademark Law shall be five years from the date of registration of the trademark. However, in case of malicious registration, the owner of a well-known trademark shall not be subject to the time limit of five years. According to the evidence submitted by the applicant and the facts found by the China National Intellectual Property Administration, before the application for registration of the disputed trademark, dozens of domestic well-known newspapers, websites and other media had carried out publicity and report on the applicant's "施华洛世奇", "施华洛" and other brand commodities. Moreover, the cited trademark has also been recognized as well-known among the relevant public in the relevant judgments of the people's court, as well as a number of invalidation decisions made by the original Trademark Review and Adjudication Board. Therefore, this case holds that the cited trademark has been well known to the relevant public for its use on the designated “precious stones”, and the disputed trademark reproduces and imitates the cited trademark; certain correlation exists between services such as wedding photography designated by the disputed trademark and goods such as precious stones designated by the cited trademark. The respondent has the subjective intention to attach the applicant's well-known trademark in its actual use, which has been confirmed in the effective judgment of the court. The use of the disputed trademark on the designated services may mislead consumers to believe that the designated services are provided by the applicant or are closely related to the applicant, thus infringing the rights and interests of the applicant. Therefore, it was determined in this case that the registration of the disputed trademark violates the provisions of the second paragraph of Article 13 of the Trademark Law of 2001.
In order to balance the legitimate rights and interests of right holders and maintain the stability of registered trademarks, the Trademark Law of the People's Republic of China strictly limits the subject qualification and the time limit for filing the invalidation declaration. In principle, the holder of prior rights or an interested party can not apply for invalidation in accordance with Article 13 of the trademark law five years after the trademark has been approved to be registered. However, there is an exception to the above situation, that is, if the registration is obtained mala fide, the five-year time limit will not be applicable to the holders of trademarks that are well known to the relevant public.
The key to applying this article after five years is to judge whether the registration has malicious intention or not, such as attaching other people's high-reputation trademark and seeking illegitimate economic benefits. In this case, the China National Intellectual Property Administration (CNIPA) fully considered that the respondent has subjective malice of attaching other people's well-known trademark in the actual use and the prior trademark has high popularity, so CNIPA determined that the respondent has done malicious acts. The application of this article strengthens the protection of trademarks well known to the relevant public, and reflects the strict regulation of trademark administrative authorities on intentionally attaching the popularity and goodwill of others' trademarks, which positively promotes the healthy and orderly development of market economy, cracks down on malicious registration, and safeguards the rights and interests of the parties.