Beijing No.1 Intermediate People’s Court applied unhealthy influence clause as stipulated in Article 10(i)(8) of P.R.C Trademark Law to reject bad-faith application, and Beijing Higher People’s Court upheld such finding.

An individual named ZHOU Jun, applied for registration of the trademark "(the abbreviation of Chinese Premier League in Chinese)” No.3383774 designating wine products in class 33.

Chinese Football Association (CFA), the management organization of Chinese Premier League, filed the opposition with China Trademark Office (CTMO) against this application. CTMO rejected the grounds of opposition and approved the mark’s registration.

CFA filed the appeal with the Trademark Review and Adjudication Board (TRAB), who rejected its appeal as well. Then, CFA took TRAB to Beijing No.1 Intermediate People’s Court.

In its judgment, Beijing No.1 Intermediate People’s Court finds that:

  1. Since CFA did not request for the protection on its trade name in the opposition procedure, the TRAB’s refusal decision of the opposition review was not made on this ground. The court, which rules only on the legitimacy of TRAB’s administrative decision, finds CFA’s claim for protecting its trade name irrelevant and shall be overruled.
  2. The Chinese characters “click here to view character” is the Chinese abbreviation of Chinese Premier League, which has established a unique correspondence with Chinese Premier League among the Chinese public. The registration of the opposed mark over wine products in class 33 would easily misguide the consumers to assume that the goods bearing the opposed mark are from Chinese Premier League, or the opposed party has authorization relations with Chinese Premier League. Thus, the opposed mark’s registration violates the provision of Article 10(i)(8) of P.R.C Trademark Law.
  3. herefore, the TRAB’s decision which was made based on the finding that the registration of the opposed mark will not have adverse effect is wrong, and should be revoked.

TRAB and the registrant of the opposed mark appealed before Beijing Higher People’s Court, which in its final verdict upheld the ruling made by the first instance court.

Comments

From the theory aspect, unhealthy influence clause of Article 10(i)(8) is prescribed to secure the public interests and public order, i.e., if the mark’s use may damage one specific party’s interests, it does not fall under the unhealthy influence.

Strictly speaking, as far as the case is concerned, the only relevant articles of the “Trademark Law” are Article 13 (well-known trademark) and Article 31, which provides that a trademark application may be rejected if it is identical or similar to a sign already used by a third party and which has acquired a certain influence. However, as a matter of fact, it is obvious that the name “click here to view character” has neither become well-known before the application of opposed mark, nor been used on the wine products.

Yet, where a person files application for registration of such a famous name as a trademark to be attached to its products, it shows an obvious intention to gain profit from the very high reputation established by such name (because of its relation to football or for any other reason). If one agrees that such intention to gain profit from the reputation of others is unjustifiable, it is necessary to find, in the “Trademark Law”, a legal basis for action, hence the reference to the general term “unhealthy influence”, as a “back-up” clause.

In another case concerning an individual JI Shiqing, who owns near 200 trademarks, mostly famous foreign brands, Beijing No.1 Intermediate People’s Court ruled that, the disputed trademark is part of a large series of bad faith trademark applications, and then also used unhealthy influence clause to reject its application. However, Beijing Higher People’s Court changed its mind and reverted to a stricter interpretation of unhealthy influence clause, and finally used an alternative article as the legal basis to reject the application.

So, the precedents tell us, provided that there are no other appropriate clauses to be utilized against the bad faith application, unhealthy influence shall be the back-up clause. Hopefully, the revised P.R.C Trademark Law may provide for the necessary legal basis to efficiently deal with such bad faith situations.