On November 13 2017 the Beijing High Court overturned the first instance judgment ruled in favor of Victoria’s Secret Stores Brand Management Inc against the registration of the trademark “维多利亚的秘密 VICTORIA’S SECRET” in Class 42 ruling that the evidence submitted by Victoria’s Secret was insufficient to prove the opposed mark was applied in bad faith.
The opposed trademark was filed by a Taiwanese individual Hui-Chuan Chiang, founder of a tea house chain Chiang, on July 6 2009. It comprised both “VICTORIA’S SECRET” and its corresponding Chinese transliteration “维多利亚的秘密” in several classes (Classes 5, 8, 16, 21, 30, 32, 33, 38, 42 and 43).
Victoria’s Secret filed opposition against the applied trademark on December 21 2010. At the initial level, the China Trademark Office (CTMO) rejected Victoria’s Secret’s claims and approved for registration of the opposed trademark on May 2 2012. In appeal, the Trademark Review and Adjudication Board (TRAB) upheld the CTMO’s decision. Notwithstanding “Victoria’s Secret” trademarks had obtained a certain reputation in relation to underwear, they failed to prove that their trademarks “VICTORIA’S SECRET” and its corresponding Chinese transliteration “维多利亚的秘密” had also secured a certain level of reputation regarding the industrial design-related services in Class 42 before the filing date of the opposed trademark.
The Beijing No 1 Intermediate Court overthrown the prior decisions, considering that Chiang multiple applications for “维多利亚的秘密 VICTORIA’S SECRET” should be deemed as filed in bad faith in violation of the principle to prohibit registrations through fraud or other unfair means according to the Article 44.1 of the Trademark Law.
The Beijing High Court overturned the first instance judgment based on the lack of evidence to support the applicant’s bad faith and the opponent’s inability to prove that the trademarks “VICTORIA’S SECRET” and “维多利亚的秘密” reached the status of “well known trademark” before 2009 in China.
According to the High Court’s decision, the number of applications was few and then glimpses the possibility that Chiang would use the marks.
Following up the recent regulations taken by the Chinese institutions against the long-standing problems of bad faith and preemptive trademark registrations in China, the Beijing High Court clarified the Trademark examination Standards previously issued by the CTMO in December 2016, and particularly props up the definition of "trademark mass filing".
According to the High Court’s appraisal’s, the “trademark mass filing” should meet certain requirements, such as plenty of trademarks filings with no genuine intention to use, or registering many prior trademarks from different entities with certain reputation. Based on these considerations, the Beijing High Court held that filing 10 copies of prior trademarks did not encounter the threshold of either mass filing or bad faith in this case.
This case also stresses the hurdle to reach the status of “well-known trademark” in China which is appreciated on a case-by-case basis and required the sufficiency of evidence especially regarding the use and reputation of the mark in China for each year in each geographic area related to each type of goods and services designated under the mark.