Recently, the English company Thatchers Cider Company Limited (hereinafter referred to "Thatchers Cider") succeeded in an invalidation action against the trademark "THATCHERS EST.1904" No. 11552387, registered by the Chinese company Jiangyin Hantang Products Co., Ltd. (hereinafter referred to "Jiangyin Hantang").
Thatchers Cider is one of the world's leading producers and sellers of cider, which has been involved in cider production since the early 20th century and is well-known for the quality of its products. In February 2016, Thatchers Cider filed an invalidation action before the Trademark Review and Adjudication Board ("TRAB") against the trademark "THATCHERS EST.1904", which was registered in mainland China in 2015 by Jiangyin Hantang under class 33 (Alcoholic Beverages).
Thatchers Cider has established a high reputation, hence the registration of the trademark "THATCHERS EST.1904" infringed its existing prior rights (namely trade name and domain name). It was also claimed that the Disputed Trademark was deceptively similar to Thatchers Ciders own mark "THATCHERS" and was registered for similar products in bad faith. In order to support its claims, Thatchers Cider adduced evidence in the form of emails sent between the Parties during May 2011 to July 2012. These emails contained discussions relating to the Respondents importation of "THATCHERS" branded cider. This evidence demonstrated that the Parties knew each other prior to the application of the Disputed Trademark in September 2012.
The TRAB held that the business dealings, as evidenced by the emails, constituted an agent/representative relationship and therefore that the Jiangyin Hantangs actions in filing the Disputed Trademark violated Article 15 of the Trademark Law. Nonetheless, the TRAB did not support the opinion that "THATCHERS" enjoyed a high reputation in China and stated that the evidence adduced, which included pictures of products and registration of trademarks in other countries, was in sufficient to establish that its trade name and trademarks had obtained ,,substantial influence prior to the application of "THATCHERS EST.1904".
This decision highlights the importance of registering IP rights and the ongoing difficulty in proving that a trademark has achieved well-known status in China.