Sun Ruirui March 13 2023 French designer successfully invalidates copycat mark based on prior name right Wanhuida Intellectual Property | Intellectual Property - China Sun Ruirui Intellectual Property FactsBackgroundDecisionCommentFactsConstance Guisset is a famous French designer. Her works cover the fields of product, space and graphic design. They have featured in many internationally renowned design exhibitions.On 23 August 2019, a Chinese company, Shenzhen Shengshi Yicai Lighting Co, Ltd (Shengshi Yicai Lighting), filed an application to register the trademark CONSTANCE GUISSET (No. 40561311) in class 20. The application was published on 6 January 2020.Guisset tried to block the registration of the trademark through an opposition proceeding, but failed. The trademark was approved for registration on 13 May 2021. Guisset then initiated an invalidation proceeding against the disputed trademark.BackgroundThe China National Intellectual Property Administration's (CNIPA's) 2021 Trademark Examination and Adjudication Guidelines state that a prior name right may be cited to challenge a trademark in the following circumstances:The name has a certain degree of reputation. It has established a stable corresponding relationship with a natural person and the relevant public perceives it to refer to such a person.The registration of the disputed trademark may cause harm to the person's name right.The disputed trademark was filed without the authorisation of the name right owner.The CNIPA also explicitly notes that:The scope of protection of a prior name right shall be determined on a case-by-case basis by factoring in the degree of reputation of the name and the degree of association between the goods or services designated by the trademark and the domains where the name right owner is known. Any trademark applicant that knowingly attempts to register other's name for the purpose of prejudicing the interests of such person, shall be deemed as a prejudice on the name right of that person.DecisionOn 27 June 2022, the CNIPA invalidated the registration on all designated goods. Its reasoning was as follows:The evidence that the invalidation petitioner had filed showed that a stable relationship had been established between the name "Constance Guisset" and the petitioner before the application date of the disputed trademark. The name had gained significant popularity and acquired influence in the furniture and home furnishing design industry. Therefore, the petitioner enjoyed prior name rights to the name "Constance Guisset".The adverse party had registered the trademark CONSTANCE GUISSET on "furniture, seat" and other goods that were highly relevant to the petitioner without her authorisation. It did this to exploit her reputation in the furniture and home furnishing design industry. Its actions could mislead the relevant public into believing that the adverse party had a business relationship with the petitioner. This further damaged the petitioner's prior name right. The registration of the disputed trademark violated article 32 of the Trademark Law and should be invalidated.In order to build a strong case in the invalidation proceeding, the petitioner furnished evidence to prove:the high reputation of the petitioner's name, "Constance Guisset";the stable corresponding relationship between the name and Constance Guisset in the cognisance of the relevant public; andthe fact that the adverse party had known or at least should have known of the name "Constance Guisset".The adverse party, which was engaged in the lighting and furniture industries and import and export business, used to offer to sell a lamp that blatantly copied Constance Guisset's design and specifically referenced her name in the product description. The petitioner also used the adverse party's filing dossier to prove that it was not a first-time trademark squatter. It had also applied to register trademarks imitating several lighting brands, such as Oslo Wood.The CNIPA found the petitioner's arguments tenable and invalidated the registration of the disputed mark.CommentThe CNIPA has becoming increasingly flexible in attacking bad-faith trademark filings. The assessment of whether a party acted in bad faith is therefore pivotal in fighting against trademark squatters. As well as looking into filing activities, brand owners are advised to keep an eye on the actual use of copycat marks and the way in which filers promote their businesses, as the combination of all these relevant facts may help establish the bad faith of the filer and build a strong case.For further information on this topic please contact RuiRui Sun at Wanhuida Intellectual Property by telephone (+86 10 6892 1000) or email ([email protected]). The Wanhuida Intellectual Property website can be accessed at www.wanhuida.com.An earlier version of this article was published by IAM.