Despite facing hurdles at the Trademark Review and Adjudication Board (TRAB) and the Beijing Intermediate Court, the Chinese mark TONI&GUY has finally been registered following a decision of the Beijing High Court.
In 2004 Toni & Guy sought to register its Chinese trademark. The application was partially rejected in 2006 due to a prior similar mark registered by a Chinese individual in 2005 covering a similar scope of beauty products.
Toni & Guy was able to initiate cancellation proceedings against the cited registration on the basis of non-use only after February 2008 (ie, three years after registration of the cited mark). As this cancellation action was still pending when the TRAB examined the appeal, and the similarity of the marks and the designated goods was seemingly not at issue, the TRAB upheld the partial rejection in 2009.
When the Beijing Intermediate Court considered Toni & Guy's further appeal in 2009, the cancellation proceeding was still pending. As the cited registration remained valid at that time, the appeal was unsuccessful. Notably, the Beijing Intermediate Court agreed with the TRAB that it was unnecessary to suspend the examination of the first instance appeal in the absence of any strong evidence in favour of suspension.
In late January 2010 the cited registration was declared cancelled due to non-use.
When the appeal was brought before the Beijing High Court in mid-2010, the conflict raised in the TRAB’s decision was no longer present following the removal of the cited registration. Accordingly, the Beijing High Court overruled the decisions of the TRAB and the Beijing Intermediate Court, and the TONI&GUY mark was accepted for registration.
At present in China, the validity of a conflict is determined at the time of examination. Hence, trademark owners are reminded that persistence is key. Although the need to suspend examination has yet to be officially recognised, non-use cancellation remains a potentially powerful tool in uplifting a conflicting prior registered mark, as exemplified by Toni & Guy's fight.
For further information please contact:
Wilkinson & Grist
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This article first appeared in IAM magazine. For further information please visit www.iam-magazine.com