1. Trademark searches of China’s own brands last year took up 53% of the total share, higher than that of their foreign counterparts 2. Bad-faith TM registration invalidated—How Nike protected its famous Nike Swoosh TM 3. TIFFANY vs. DIFFANY 4.“埃索黄金眼”invalidated
Trademark searches of China’s own brands last year took up 53% of the total share, higher than that of their foreign counterparts
After analyzing the number of online searches for hot domestic and foreign brands, deputy director of China’s State Administration of Industry and Commerce (SAIC) claimed that the trademark searches of China’s own brands last year took up 53% of the total share, higher than that of their foreign counterparts, suggesting consumers’ increasing recognition for domestic brands.
China has made new breakthroughs in trademark facilitation reform, making smooth progress in electronization of the trademark registration process. By the end of this March, the number of valid TM registration reached 12.937 million. Administrations of Industry and Commerce have set up 56 TM Service Sites, 30 Pledge Registration Sites and the first TM Examination Cooperation Center in Guagnzhou, outside Beijing.
According to SAIC, China’s industry and commerce as well as market supervision departments accepted and handled 490,000 cases concerning infringement and counterfeiting, and closed 45,000 cases, involving 560 million yuan. The departments also transferred 293 criminal cases concerning infringement and counterfeiting and involving 160 million yuan to judicial organs, which signified a severe deterrence against TM infringing acts.
In terms of TM regulation, deputy director of SAIC said that they are exploring ways to improve through big data supervision, cross-jurisdiction enforcement, and perfection of the information sharing platform for TM administrative enforcement. Information on TM registration, TM infringement and counterfeiting will be merged into China’s Corporate Credit Information Bulletin System.
The Chief Platform Supervision Officer of Alibaba pointed out that 75% of Ali’s IP protection system is TM related, which indicated a great demand in this regard.
Bad-faith TM registration invalidated—How Nike protected its famous Nike Swoosh TM
This case is typical in that it invalidated bad-faith registration through applying “Where the trademark of an identical or similar kind of goods is a reproduction, imitation, or translation of another person's well-known trademark not registered in China and is liable to cause public confusion, no application for its registration may be granted and its use shall be prohibited.” as provided in China’s Trademark Law. In this case, the reference mark, the Nike Swoosh was affirmed as a well-known trademark, and its protection scope was extended in accordance with Paragraph 2, Article 13 of Trademark Law. A precedent ruling of Beijing High People's Court was also referenced to support the ruling of this case.
Quanzhou Luojiang Chaosheng Shoes Limited (LCS) filed an application for the registration of No. 3275213 Figure trademark (the dispute trademark) before China’s Trademark Office on August 15, 2002. The trademark was approved of its registration on July 14, 2005 and was designated on the use of goods of Class 25 including “clothing, shoes, ties, socks and belts”. After renewal, the trademark is allowed to be used until July 13, 2025. Nike, Inc. (Nike) filed an invalidation request against the TM on May 23, 2014 before TRAB on grounds that: Nike asked to recognize the No.991722 trademark (reference TM) as a well-known trademark on the use of goods of Class 25; and the registration of the dispute trademark is reproduction and imitation of Nike’s famous TM. On March 30, 2015, TRAB rulled to maitain the dispute TM.
Unsatisfied with the result, Nike brought the case to court, holding: 1. the evidence as provided by Nike was sufficient to prove the reference TM is popular enough to be regarded as a well-known TM; and 2. despite knowing clearly the existence of Nike and its famous design logo, LCS sought to profiteer by taking advantage of the good reputation and high popularity of Nike and its TM, which constituted bad faith and shall be prohibited by Article 13 of Trademark Law. Therefore, Nike requested the dispute TM be invalidated and TRAB’s Descartes be overruled.
Summary of the ruling
After hearing the case and based on the evidence already provided, the court held that the reference TM had already been popular enough in goods of “clothing, shoes and hats, etc” to be regarded as a well-known TM before the dispute TM was registered. The relevant public of the designated goods of the dispute TM should know the existence of the Nike Swoosh. Under such circumstances, it would create confusion among relevant consumers as to the source of goods if the dispute TM should be allowed to be used. In addition, after Nike’s use and publicity, the reference TM formed a sole correspondence with Nike. The third party’s use of the dispute TM took a free ride of the reference TM’s market reputation and reaped the benefits of Nike which were the result of the latter’s hard work and heavy investment, violating Nike’s legal rights and interests. The court therefore ruled that the dispute TM shall be invalidated.
TIFFANY vs. DIFFANY
This is another typical case that prohibited bad-faith registration by applying Article 13 of Trademark Law. When determine whether a dispute TM would mislead the public and thereby harm the TM right owner’s interest and rights, factors such as the popularity of the reference mark, the similarity of the two marks, the relevance between the designated goods and the intention of the dispute mark shall be considered. In this case, existing evidence showed that TIFFANY and its Chinese transliteration had formed a strong correlation after long and accumulated use. Shanghai Zhendi Decorative Material Co., Ltd (Zhendi) not only registered the dispute TM “蒂凡尼”, but also registered an English TM “DIFFANY” and their combination “蒂凡尼壁纸DIFFANY”. On top of that, Zhendi used “蒂凡尼” and “DIFFANY” all at once, despite the close similarity that “DIFFANY” shared with the well-known TM “TIFFANY”. Zhendi’s intention to play up to well-known TM stood out in bold.
Timeline of the Case
January 20th, 2010 → Shanghai Zhendi Decorative Material Co., Ltd (Zhendi) filed the No. 8009772 application for the registration of “蒂凡尼” before CTO February 7, 2011 → TM registration of “蒂凡尼” was approved and allowed to be used exclusively until February 6, 2021, with designated goods in Class 27 including wallpaper, carpets etc, November 21, 2013 → Tiffany & Co. Filed invalidation request against the dispute TM on grounds that it was a reproduction and imitation of Tiffany’s well-known TM “TIFFANY” and “TIFFANY&CO”. March 2, 2015 → TRAB held true of Tiffany’s reasons and invalidated the dispute TM Zhendi brought the case to court, holding: 1. there existed no correlation between the designated goods (wallpaper etc.) of the dispute TM and that (jewellery, gem etc.) of the reference TM, which would not confusion among the relevant public and would not dilute the influence of the well-known TM; and 2 after extensive use on designated goods such as wallpapers, the dispute TM has gained considerable fame in the business, thereby clearing its suspected cling to well-known TM.
Summary of the ruling
The court held that Tiffany’s trademark registered on “jewellery and gem” had already been well known to the relevant public before the dispute TM was registered. Whereas the dispute TM “蒂凡尼” not only sounded similar with “TIFFANY”, but also written alike with the TIFFANY’s Chinese TM 蒂芙尼, with just a character away. Designated to be used on wallpapers, the dispute TM could easily lead the relevant public to draw connections between the two TMs and mistaken the source of the goods as a result. Accordingly, the court dismissed the action as the dispute TM violated Article 13 of Trademark Law enforced in 2001.
This case is typical in that it deterred bad-faith registration by applying Article 30, 13 and 44 of Trademark Law.
This case made clear of the following rules: 1. where the designated goods of dispute TM falls similar or identical with that of the reference TM, Article 30 of Trademark Law shall apply; 2. the recognition of well-known TM shall be proceeded based on actual needs, which is to say that where a dispute TM reproduces or imitates a well-known TM, cross-class protection shall be given to the latter in accordance with Article 13 of Trademark Law and in consideration of the connections between the two and whether bad-faith was involved; and 3. excessive registrations of TM in reproduction or imitation of others’ already well-known TMs or TMs with outstanding ingenuity fall into the “other illegitimate means” prohibited by Trademark Law and shall be cancelled in accordance with Paragraph 1, Article 44 of Trademark Law. Case details
Dissatisfied with TRAB’s No. 49931 decision made on May 31, 2016 concerning the invalidation request of “埃索黄金眼”, ExxonMobil Corporation (ExxonMobil ) filed an administrative lawsuit before court. The following sued decision is made on ExxonMobil’s invalidation request against the No. 9945806 TM of Guilin Aisuo Co. Ltd. The dispute TM differentiates with the word “ESSO” of No. 177019 “ESSO and design” (reference TM 1) and No. 76856 “ESSO and design” (reference TM 2) in text and visual effects, thereby not constituting similar TMs. In addition, the designated goods of the dispute TM is different from that of No. 8918253 “埃索” (reference TM 3) in functions and usages and are not the same or the similar with each other. In view of the above, the dispute TM does not constitute the same or similar TM as provided in Trademark Law with the reference TM 1, 2 and 3. TM Designs
Summary of the ruling
“ESSO” and “埃索” of ExxonMobil were highly protected by China as early as 1999 as one of the major TMs. The two TMs and their series have already enjoyed high popularity after long term use in China mainland, and have been recognized by CTO, more than once, as well-known TMs designated to be used on industrial oils and greases, petroleum and petroleum products. Accordingly, the court affirms reference TM 7 as a well-known TM on industrial oils and greases, petroleum and petroleum products. Guilin Aisuo Co. Ltd. not only registered the dispute TM, but also registered dozens of other TMs containing “埃索” in other classes, suggesting bad faith in its intention. This could easily mislead the relevant public to mistakenly connect Guilin Aisuo and its TMs with ExxonMobil and its TMs. In effect, Guilin Aisuo took advantages of the market reputation of ExxonMobil’s well-known TMs and diluted their significance, harming the legal rights and interests of ExxonMobil as the rights owner.