By Ms. Haoyu Feng, Lawyer of Chofn IP
On 14 December 2023, the Beijing Intellectual Property Court (BIPC) held a press conference to release 10 typical cases of curbing malicious trademark filing at a time when malicious trademark filing remains serious and the illicit parties squat the special terms of public resources, hot events, emergency, famous personal names, others’ prior name brands, etc. I have summarized the released cases, the legal basis and principles as follows. If you are interested in the full translation, please refer to the link below:
Case 1: Filing a large number of trademark applications within a short period of time, without proof of bona fide intention to use or other justifiable reasons, which has constituted a scenario under Article 4 of the Trademark Law, namely bad faith filing not aiming at use.
In this typical case, a liquor company’s application for the mark “王子(prince)” in class 33 was rejected under Article 4.1. The company was found to have applied for more than 340 marks in classes 3, 18, 32, 35 etc. including the mark “迈巴赫” (Maybach in Chinese), similar to others’ marks. The number of filing is more than 300 from 2020 through 2021. According to the period of time, the number of applications, and the designated classes of the goods, the company’s large number of applications has exceeded the normal business needs and has constituted bad faith filing without intention to use.
Case 2: A trademark applicant’s such current and former employees as legal representatives or senior executives are aware of others’ prior used marks but squatted similar marks on similar goods against Article 15.2 of the Trademark Law. The “other relations” under this Article shall include relatives, employment, adjacent business domiciles, etc.
The trademark in question was applied for by an educational company on training, education, arrangement and organization of conferences in class 41. The mark had been used influentially by the Academy concerned before the application date. The educational company’s former legal representative, HE by surname, had been employed by the Academy, which has constituted a scenario under Article 15.2.
Case 3: Where a mark containing a geographical indication is applied for registration but the applicant could not prove that the goods come from the region protected under the geographical indication, the use of the mark shall be regarded as likely to confuse the public.
The mark “老鹰茶(Eagle Tea)” was registered on tea in class 30 by a tea company based in Chengdu and the tea is processed in Qionglai, but the mark is a geographical indication of China and represents tea from the six townships of Shimian County. The evidence is insufficient to prove that the tea comes from the six townships of Shimian County.
Case 4: The titles of influential TV columns and programs constitute prior rights under Article 32 of the Trademark Law. Applying for similar or identical marks by squatting these titles on similar or identical goods shall be prohibited.
The mark “远方的家 深度旅游顾问Journey Ahead” was applied for on journals, books etc. in class 16 by a cultural industry company. Before the application date, the TV program had been broadcasted by China Central Television’s (CCTV) tourism column every day and the title had been known to the relevant public, strongly corresponding to CCTV. The company’s use of the mark is likely to mislead or confuse the relevant public.
Case 5: Where a trademark applicant, aiming to unfairly occupy public resources, applies for public event terms, names of public cultural resources as trademarks in a large number, it constitutes a situation of “obtaining registration by other unfair means” under Article 44.1 of the Trademark Law.
Applicant LI applied for the mark “泉城百花园” on garment rental etc. in class 45, which is identical to the name of another project operated by Zhujiayu Company. In addition, Li also applied for more than 170 marks relating to the pandemic and other project names. Li’s conducts has obviously exceeded the normal business use, violated the principles of honesty and creditability, disturbed the regular trademark administration, and harmed the market environment of fair competition.
Case 6: Where a trademark agency, in order to circumvent the law, applies for trademark registration in the name of its former senior executive, the application may be regarded as the agency’s conduct and shall be regulated under Article 19.4 of the Trademark Law.
Applicant YAO applied for the mark “步步高” on fruit-based snack food, preserved fruits, black fungus, etc. in class 29. About 20 days before the application date, Yao resigned from the position of senior executive of an intellectual property agency company. Although YAO is not a trademark agency, he has special relationship with the agency. Moreover, YAO applied for more than 60 marks in multiple classes, most of which were represented by the agency, and multiple marks under YAO’s name are on sale at a trademark trading platform. YAO’s conduct has violated the principle of honesty and creditability.
Case 7: Where a party maliciously squats others’ trademarks well-known in the Internet environment across the classes, full consideration shall be given to such factors as the party’s subjective malice, the highly overlapping consumers of the relevant goods or services in the Internet environment and the cross-class protection scope shall be determined for well-known marks.
A liquor sales company registered the mark in question “快手老铁 (Kuaishou Laotie)” on accounting services in class 35, whereas an information technology company had registered the cited marks “快手(Kuaishou)” and “老铁 (Laotie)” on production of programs, entertainment services, etc. in class 41. Due to Kuaishou’s extensive user base of nearly 700 million, making it an almost nationwide short video platform, the relevant public might associate the mark in question with the information technology company, which might cause confusion and weaken the distinctiveness of the well-known mark under Article 13.3 of the Trademark Law.
Case 8: Where a party, knowing that its registered mark bears serious defect, for the main purpose of seeking unfair business benefit and harming others’ legitimate rights and interests, sends warning letters and files AMR complaints, such conducts has seriously violated the principle of honesty and creditability and constituted abuse of the trademark right.
The plaintiff, a tourism company filed a lawsuit against the defendant, a science-tech company, claiming that the defendant had known of the tourism company’s trade name “古北水镇 (Gubeishuizhen)” and the fame of the unregistered trademark, but applied for the same mark in classes 33 and 25, sent warning letters and filed AMR complaints. The defendant infringed the plaintiff’s legitimate rights and interests and was ordered to compensate the plaintiff’s necessary expenses on responding to the abuse of the trademark right.
Case 9: Where a party, against the principle of honesty and credibility, acquires trademark right without good faith, and sues the fair user for trademark infringement, it shall constitute abuse of right.
Plaintiff MA registered and used the mark “jiaoren骄人” on jewelry in class 14 and filed a lawsuit against a jewelry company selling “骄人” rings, necklace on JD platform for trademark infringement, requesting for stopping the infringement and claiming damage and reasonable expenses of RMB50,000. The courts noted that MA registered the mark unfairly, without true intention of use or actual use, and the defendant’s affiliated company had used the mark earlier, and rejected MA’s claims.
Case 10: Where an infringer fully imitates a right holder’s prior name brand in terms of product packaging, advertising slogans, sales model, etc. and mixes the authentic with the fake goods confusingly, with evident subjective malice to take advantage of the holder’s goodwill and with serious consequences, punitive damages shall apply.
A liqueurs company, the holder of the “野格(Yege)” series marks on alcoholic products in class 33, sued an alcoholic company for using similar marks on liqueurs, beers, functional beverages, etc., copying its products packaging, decoration, using confusing advertisement. Furthermore, the alcoholic company mixed the infringing products with the authentic products for sales and continued the infringement despite the holder’s repeated enforcement declarations and warning letters. The willful and serious infringer was finally ordered to stop infringement, clear the influence, and pay a punitive damage of RMB10 million.
