It is the China Trademark Office (CTMO) general principle to examine opposition cases only by examining the opposed trademark and the cited trademark. Normally, other trademark applications filed by the opposed have no impact on the results of the CTMO’s decision. However, such other trademark applications may constitute evidence that the applicant commits what is called “pre-emptive trademark filings”, which may disturb the market and cause “negative social impact”. The CTMO is, therefore, allowed sometimes to take such other trademark applications into consideration when assessing the situation and deciding on the opposition.

Kent Nutrition Group, Inc. (Kent) is the user of the trademark “BYNATURE”, designating pet food, in class 31. Before Kent could file an application to register its trademark, a company called Ningbo Guan Ya Trade and Business Co., Ltd. filed an identical trademark application for “BYNATURE” also designating pet food, in Class 31.

Kent filed an opposition, complaining about the bad faith of the applicant, and submitted that the applicant had also filed several other trademark applications such as “ZIWIPEAK”, “BLUE SEAL” and “福摩FROMM”, which were identical with other third parties’ trademarks which had already built up a certain market reputation in China and designated similar goods.

In its Decision (2012) No.62322 made on December 4, 2012, the CTMO held that the filing of the opposed trademark “BYNATURE” constituted malicious imitation, violated the principle of good faith and would cause negative social impact, which should not be approved in accordance with Article 10.1.8 of the China Trademark Law, which refers to “other unhealthy influence” as an absolute ground of refusal.

There is another similar opposition case about a trademark “贝吉哈克” (Chinese transliteration of BERGERAC), filed by an individual named QU EP. SHU. The Latin word “BERGERAC” is a French appellation of origin for wines and the Institut National des Appellations d’Origine of France (INAO) filed an opposition against this application of its Chinese transliteration.

In its decision (2012) No.60558 made on November 27, 2012, the CTMO stated that the opposed party is not from the region governed by the appellation of origin, and that the opposed party also filed for registration of the trademark in Latin “BERGERAC”. The opposed trademark, once approved for registration, would mislead the public. Therefore, the CTMO supported the opponent’s grounds of opposition in accordance with the Article 16 of China Trademark Law and rejected the application for registration of the opposed mark.

WAN HUI DA trademark counsel LEI Yongjian represented Kent Group and INAO in the above two cases.

Comments

In the above two cases, the CTMO clearly indicated that the trademarks filed by the opposed parties other than the opposed trademark could also be taken into account when making decisions.

In the first case, the cited mark had been used by the opponent, but had not yet built “a certain influence”, as stipulated by Article 31 of the Trademark Law. Such article could not be applied to this case. However, by taking into consideration other malicious trademark applications files by the opposed party, the CTMO was able to rule that the opposed party “violated the good faith principle and would easily cause negative social impact”, and citing the absolute ground of refusal provided in Article 10 of the law.

In the second case, the CTMO attributed the application for registration of the Latin mark other than the opposed mark in Chinese characters to the opposed party’s unjustifiable intention and the possible confusion and finally cited Article 16 to reject the registration of the opposed mark.

In sum, the CTMO sometimes agrees to base its decision on the subjective intentions of the applicant. Therefore, it is important to bring evidence of the trademark filing activities at large and not only the opposed trademark. This can become a very important element for the CTMO in judging the possibility of causing market confusion. So, in the preparation of opposition arguments and their related evidence, it is essential to do a full search of all the trademarks filed by the opposed party and carefully elaborate the possible bad faith implied from the search results. Meanwhile, it is advisable to submit a written petition to the CTMO asking for assigning the opposition cases that share the same opposed party to the same examiner. By doing so, even if these cases cannot be assigned to the same examiner, the examiners in charge of the other cases will have a chance to become aware of their respective cases which will give them a more comprehensive picture about the opposed party’s trademark filing activities.