This case offered a practice guidance on bad faith. When plaintiff claims that its trademark owns “prior right” but not recognized by the judge in the China National Intellectual Property Administration, the attorney has shift litigation strategy and won the case by focusing on the bad faith of the third party who acquired trademark by fraud or any other illicit means.
Entrusted by the client, Foridom IP Law Firm senior partners, Attorney Chen Shaolan and Li Xiaoyan, represented the plaintiffs to declare invalidation of the disputed trademarks, and finally earned the support of the court.
The plaintiff filed application for trademark invalidation and appointed Fridom IP law firm to initiate an administrative lawsuit.
In this case, Ms. Chen an Ms. Li has changed the litigation strategy to bad faith when the dispute trademark failed to be recognized by the court as a well-known trademarks and prior trade name. And it turns out to be successful litigation in the end based on Article 44(1) of Trademark Law.
Firstly, Article 13(3) of Trademark Law stipulates that
“Where a trademark for registration to be used on different or dissimilar goods is a copy, imitation, or translation of a well-known trademark of another party which has been registered in China, misleads the public, and may cause damage to the interests of the registrant of the well-known trademark, it shall not be registered and shall be prohibited from use.”
The plaintiff has failed to provide sufficient evidence on the economic indicators, advertising scope, advertising investment, market rankings, etc. of the goods used by the trademark.
Therefore, it was insufficient to prove that the trademark had been widely used by the relevant public before the trademark application for registration in dispute.
In addition,the scope of the designated use of the disputed trademark is obviously different from plaintiff commodity’s nature, function, production department, consumers, and sales channels.
Secondly, whether the registration of a trademark constitutes an infringement on the trade name depending on the register date of the trade name, the previous trade name market reputation，dispute trademark classification and outlook.
Evidence submitted by the plaintiff proved that plaintiff’s trademark has certain market reputation in the animal feed field, but it is irrelevant to the third party’s market regarding to the commodities nature, function, production departments, consumers, and sales channels.
The business scope registered by the plaintiff was industrial investment and the sale of metal materials and products. Thus, the evidence was insufficient to prove that the use of the disputed trademark would cause the confusion relevant public.
However, Article 44(1) stipulates that
“Where a registered trademark violates Article 4, Article 10, Article 11,Article 12, or paragraph 4 of Article 19 of this Law, or its registration was acquired by fraud or any other illicit means, the Trademark Office shall declare invalidation of the registered trademark; and any other organization or individual may petition the Trademark Appeal Board to declare invalidation ofthe registered trademark.”
“Any other illicit means” obtaining trademark registration by “other improper means” mainly refers to the situation of disrupting the order of trademark registration, damaging public interests, improperly occupying public resources, or seeking improper benefits by other means other than deception.
Despite of that, the third party registered more than 20 trademarks which are the same or similar to other brands.
Moreover, the third party has no evidence of using those multiple trademarks. In that case, it will not only cause the relevant public to misunderstand the source of the goods, but also disrupt trademark administration order.
In the end, the court ruled that the National Intellectual Property Administration shall make a new decision on the dispute trademark.
《世界商标评论》（World Trademark Review）2020年度“商标保护及诉讼”领域杰出个人；国际商标协会公共信息委员会委员；优秀知识产权诉讼卓著团队；全国十佳著作权诉讼律师；上海市徐汇区人民政府兼职法律顾问；上海知识产权服务之星；上海市闵行区知识产权协会专家委员会专家。
The senior partner of Foridom Law Firm, who has been award as 2020 Outstanding Individual in the Field of "Trademark Protection and Litigation" (World Trademark Review)
Member of the Public Information Committee of the International Trademark Association; Outstanding Team of Intellectual Property Litigation; National Top 10 Copyright Litigation Lawyers; Part-time Legal Counsel of the People's Government of Xuhui District, Shanghai; Shanghai Intellectual Property Service Star; Expert Committee of Shanghai Minhang District Intellectual Property Association.
The trademark administrative litigation cases represented were selected as the 2019-2020 China Trademark Association National Excellent Trademark Agency Cases, and the Shanghai Top Ten Trademark Agency Cases 2019-2020.
The unfair competition cases represented by the Shanghai High People’s Court Intellectual Property Leading Cases in 2006, Perennial expert writer of “China Intellectual Property News”, “China Trademark” and “Shanghai Intellectual Property”.
Full-time lawyer of Foridom Law Firm. Focus on intellectual property rights, civil and commercial matters, representing more than 100 cases including trademark administrative, copyright, unfair competition, civil litigation cases etc.
Reported by “China Intellectual Property News”, Beijing Intellectual Property Court etc. Ms.Li also serves as perennial legal counsel for many companies, providing them with civil and commercial legal consultation and legal agency services.