Yilai (Tianjin) Sanitary Ware Co., Ltd. Shanghai Branch entrusted Foridom IP Law Firm to forward the invalidation application on the class 9 No.18399009 trademark.
Incalid cross-examination strategy
The trademark in dispute infringed the applicant “prior right”. As it is the applicant’s affiliated company trade name.
Namely, it means that the defendant has a bad faith that violated the provisions of the 2013 Trademark Law. Therefore, the trademark in dispute should be declared invalid.
According to the "Trademark Trial Standards", the applicable conditions for the determination of infringement of prior trade name rights are as follows:
a. Before applying for registration of the disputed trademark, another person has registered and used its name;
b. The trade name has a certain reputation among the relevant public in China;
c. The registration and use of disputed trademarks may easily cause confusion among the relevant public, and may damage the interests of the owners of the prior trade name.
The applicant's affiliated company "Shanghai Yilai Sanitary Ware Co., Ltd." had previously registered and used the "Yilai" trade name.
We believe that "Yilai" is the name of the applicant and the applicant's affiliated company. It is a contrived vocabulary and is highly original.
The respondent claimed that the disputed trademark was its own conception and design, but could not provide any evidence related to the design idea and use evidence on the corresponding product, so the applicant did not approve it.
The number of trademarks applied for by the respondent far exceeds the normal demand for trademark use, and most of the trademarks (including disputed trademarks) are in the state of public sale.
Therefore, the respondent’s malicious intentions that are not intended for use Cybersquatting behavior is harmful to socialist morals and customs or has other adverse effects, and violates the provisions of the 2013 "Trademark Law", and the disputed trademark shall be declared invalid.
According to the applicant’s investigation, the respondent has applied for 1,247 trademarks in total, it exceeds the demand for normal use of the trademark.
Moreover, most of the defendant’s trademarks are identical or similar to others’ trademarks with strong distinctiveness, and obviously lack real use Intention, there is the practice of malicious cybersquatting.
At the same time, the disputed trademark is in a state of sale, which clearly shows that the registration application for the disputed trademark is a malicious registration application that is not intended for use.
The disputed trademark is similar to the applicant's trademark, and the goods designated by the defendant are highly related to the plaintiff, it constituted similar goods.
Therefore, if a disputed trademark is approved for registration, it will easily lead to confusion and misunderstanding by the relevant public.
Decision: Invalidate the disputed trademark No. 18399009
Ms. Gan Zhangguai, the senior partner of Foridom IP Law Firm, has earned patent attorney, trademark attorney, technical broker, and member of the International Trademark Association, with more than ten years of professional experience in intellectual property rights.
The main practice areas of her are domestic and foreign patent, trademark, copyright and project declaration affairs. She is good at patent and trademark planning and layout, patent and trademark international cases, project planning, etc.
She has provided a full range of intellectual property legal services for the company,such as Juneyao Airlines, NU SKIN, Caohejing Hi-Tech Park, Kimberlite Diamond, The Oriental Pearl TV Tower, BesTV, Vingoojuice, DAZZLE, WiFi Master key, SLAMTEC, Taoyuan Village, PETKIT, JAMES DEAN, HADO, Boni Selection and Shiheng Technology，highly praised by customers.
Miss. Zhang Yuwei, senior trademark attorney with more than five years of professional experience in trademarks. Graduated from the Law School of Shanghai University of International Business and Economics.Miss. Zhang has passed bar examination.
Her main practice areas are domestic trademarks, international trademarks, copyrights, and trademark infringement matters. She is good at intellectual property planning and layout, international trademark cases, and difficult andcomplicated trademark cases.
She provides legal consultant service for Juneyao Airlines, Xujiahui Mall (Group), HuaxiBio, Nu Skin Group, Weir Semiconductor, Tiansu Group, BesTV, Vingoojuice, SLAMTEC, Hesai Technology, PETKIT, Shiheng Technology, and many other companies.
Miss. Shi Jian, Trademark Attorney, with more than two years of professional experience in trademarks, graduated from East China University of Political Science and Law with a master's degree in intellectual property.
Miss. Shi has passed the bar examination and she is an registration lawyer in China . The main areas of her work include evaluation of the feasibility of trademark registration, trademark refusal review, trademark opposition and invalidation, etc., trademark use infringement risk evaluation, trademark diagnosis, trademark planning and layout, etc.
Represent Clints of her are listed as following: Huaxi Bio, Xujiahui Mall (Group), BesTV, Shiheng Technology, Hesai Technology, Yilai Sanitary Ware, etc.