According to China Intellectual Property News, the Trademark Office of the State Intellectual Property Office selected 5 Typical Cases of Trademark Review in 2022 on April 27th.
Case 01: Trademark Review Cases about “泉茂”(Application Number 25908980 ), “林记正泉茂”(Application Number 33187494 ), “正泉茂”(Application Number 33194676 ), “泉茂世家 QUANMAO PASTRY.”(Application Number 26373585 )
The two parties are nephew and uncle. “正泉茂” series logo is the brand name and trademark inherited by its family. The main product is Mung bean cake, which has a high local popularity in Quanzhou. Both parties applied for trademark registration around the logo, and the trademark applied for registration was repeatedly cited and rejected by the other party. Relevant procedures were initiated against the other party’s trademark, which spanned more than 10 years and involved more than 20 trademark cases, covering almost all types of cases in trademark authorization and confirmation procedures.
Through combing and studying, the collegiate group fully grasped the trademark registration situation of both parties, the cases involved and their mutual relations, and the initiative and passivity of both parties, and formed a preliminary mediation strategy. After carrying out the itinerant oral trial and mediation work in the local area, the Collegiate Group always stood in the position of the parties, conducted field investigation and evidence collection, communicated with both sides face to face repeatedly, and finally facilitated the reconciliation. According to the settlement agreement, the two parties have concluded 10 trademark cases after applying for withdrawal, signed free license agreements on 13 trademarks, and promised each other not to apply for registration of similar trademarks on core commodities, and not to launch any trademark authorization confirmation or rights protection procedures for the 44 trademarks that both parties have applied for registration. The trademark disputes between the two parties over the years have been completely settled and ended.
Case 02: Trademark Review Case of “东来顺”, Applicant Number 13571777.
Applicant: Beijing Dongshun Jituan Ltd.
Respondent: Liu Yuzhi
Applicant Argument: The respondent has obvious subjective malice, and the disputed trademark constitutes a copy or imitation of the applicant’s “东来顺” trademark, which violates the provisions of Article 13 of the Trademark Law.
After hearing, the Trademark Office believed that when the applicant made the request for invalidation of the disputed trademark, it had been more than 5 years since the registration date of the disputed trademark was approved. According to Article 45 of the Trademark Law, the applicant must not only prove that the trademark “东来顺” has been well known to the relevant public before the date of application of the disputed trademark, but also prove that the owner of the disputed trademark has bad faith. The documentary evidence submitted by the applicant can prove that before the date of application of the disputed trademark, “东来顺” has been identified as a Chinese time-honored brand and has reached the level of popularity widely known to the relevant public; The trademark under the name of the respondent involves multiple categories of goods and services, which obviously exceeds the business scope specified in the business license of individual industrial and commercial households submitted by the respondent. Meanwhile, considering the originality and popularity of the trademark of “东来顺”, the respondent’s subjective malice in copying and imitating the trademark of “东来顺” is obvious, and the registration and use of the disputed trademark is easy to mislead the public. If the applicant’s rights and interests may be harmed, the disputed trademark shall be declared invalid in accordance with the provisions of Paragraph 3 of Article 13 of the Trademark Law.
Case 03: Trademark Review Case of “伍连德医疗及图”, Application Number 16038591.
Applicant: Huang Jiangfang
Respondent: Wuliande Guoji Yiliao Guanli Zhongxin Ltd.
Applicant Argument: Wuliande is the founder of China’s epidemic prevention and quarantine industry, the pioneer of modern medicine and epidemiology in China, and the first president of the Chinese Medical Association. The registration of the disputed trademark violates the principle of good faith, which is liable to misidentify the source of the service by the relevant public, thus negatively affecting the social public interests and public order in our country and violating Wuliande ‘s right of prior name.
After hearing, the Trademark Office held that the evidence submitted by the applicant showed that Mr. Wu Liande has a high reputation in the cause of epidemic prevention and quarantine in China, as well as in the fields of modern medicine, microbiology, epidemiology, medical education and medical history. The prominent identification part of the disputed trademark is the word“伍连德”, which is used in the approved service. It is easy for the public to think that it has a certain relationship with Mr. Wu Liande, and thus misidentify the source of services and other features. The registration of the disputed trademark has constituted the situation stipulated in Article 10, Paragraph 1 (7) of the Trademark Law, so the disputed trademark is declared invalid.
Case 04: Trademark Review Case of “叁零叁”, Applicant Number 44714668.
Applicant: Tianjinshi Wanrong Huagong Gongye Gongsi
Respondent: Tianjinshi Sanlingsan Wuliu Ltd.
Applicant Argument: the applicant is an enterprise under collective ownership. During his tenure as the legal representative of the applicant, Wang transferred a total of 53 trademarks under the applicant’s name (hereinafter referred to as cited trademarks) to the respondent without permission. Later, the respondent applied for the registration of the disputed trademark similar to the cited trademark, which made the disputed trademark constitute the situation of obtaining registration by improper means.
After hearing the case, the Trademark Office held that the actual controller of the respondent, while serving as the legal representative of the applicant, transferred the trademark cited in the case to the respondent’s name under the circumstances of obviously damaging the interests of the applicant as a collective owned enterprise, In addition, around the logo of the cited trademark, more than 20 trademarks including the disputed trademark in this case were applied for registration, which were similar to the quoted trademark or could easily be mistaken by the relevant public for having a specific connection with the quoted trademark in this case. The act of the respondent applying for registration of the above trademark can hardly be called legitimate, which violates the principle of good faith and has constituted the situation of trademark registration by other improper means. Therefore, the application for registration of the disputed trademark violates the provisions of Article 44, Paragraph 1 of the Trademark Law.
Case 05: Trademark Review Case of “莱迩”, Applicant Number 48720058.
Applicant: Shanghai Laimi Jiudian Guanli Ltd.
Respondent：He Lei
Applicant Argument: The applicant is mainly engaged in hotel management, and the respondent used to be an employee of the applicant. Knowing that the applicant had previously used the trademark of “莱迩”, the applicant still registered the same trademark on the accommodation service, nursery service, nursing home and other services of the Class 43 hotel, with obvious subjective malice.
After hearing, the trademark Office believes that the applicant evidence can prove that the use of “莱迩” brand, trademark, main hotel management. By comparing “郝磊” related entry documents and other materials submitted by the applicant, it can be determined that the respondent used to be an employee of the applicant before the date of the disputed trademark application. In the process of employment contact, the respondent must have some understanding of the applicant’s situation, especially considering that the respondent has applied for and registered several trademarks similar to the applicant’s other prior trademarks in the Class 43 service, so it can be reasonably identified that the respondent knows the “莱迩” trademark used by the applicant based on the aforementioned subordination relationship. In this case, the respondent will be the applicant “莱迩” trademark identical words registered in its main business closely related to the hotel accommodation services, nursery services and other services, subjective ca not be justified. To sum up, the disputed trademark violates the provisions of Article 15, Paragraph 2 of the Trademark Law and is declared invalid.
Post time: May-29-2023