CHANG TSI
Insights
This is an invalidation case. In this case, China National Intellectual Property Administration (CNIPA) made a major breakthrough in supporting the Applicant by recognizing the malice of the Respondent in plarizring the Applicant’s OREO and 奥利奥(OREO in Chinese) marks. The CNIPA recognized that the Respondent has the bad faith in clinging to the goodwill of others and seeking illegitimate interests when applying for the marks “ Ao Li Ao in Chinese”、“ Ao Li Ao in Chinese and OREO”、“Wei Le Bao in Chinese”、“Bai Shi Ji Xiang in Chinese”、“ Di Wu Ji in Chinese”, etc. Therefore, the Respondent's actions disrupted the normal order of trademark registration management, damaged the market order of fair competition, and violated the principle of good faith, which constitutes the situation “ register trademarks by other improper means” referred to in Article 41 of China Trademark Law[2001], and the Disputed Mark was declared invalid accordingly.
The Disputed Mark was registered on October 21, 2010 and the invalidation action was filed on April 2, 2021, which has exceeded the 5-year statutory time limit for an invalidation action filed by non-well-known trademark owners regulated by Article 45 of China Trademark Law. Also, the Applicant does not have prior trademark rights in Class 32 and its trademarks have not been recongized as well-known trademarks in its core-classes. Under such circumstance, considering the Disputed Mark blocks the client's application and has the malicious intent of plagiarism and preemptive registration, we still recommend that the client file an invalidation action to clear the obstacle to the client's trademark registration.
The Respondent Huang En De preemptively registered a number of "澳利澳"(Ao Li Ao in Chinese) series trademarks in the Class 32 where the Applicant has not obtained registration, and the earliest trademark registration was the Disputed Mark in this case. The Applicant's subsequent applications for registration in Classes 30, 32 were all rejected by citing the Disputed Mark. In view of the fact that the Disputed Mark had been registered for over five years when it was noticed, the Applicant initially wanted to rely on on-use cancellation to remove the obstacle, but it turned out that the non-use cancellation only removed the subclasses 3201& 3203 while the core subclass 3202 was not removed because the Respondent has put the Disputed Mark into use. The Applicant conducted deeper search and confirmed that the Respondent had indeed used the Disputed Mark on beverage products, so further non-use cancellation cannot be successful .
In 2021, after the Disputed Mark once again blocked the Applicant’s registration of beverage-related products in Class 32, the Applicant informed us its marketing department needs the goods for licensing. Based on the high popularity (well-known) of the client’s prior marks and the bad faith of the Respondent, we re-evaluated the Disputed Mark and decided to file an invalidation action. Finally, the CNIPA supported our arguments of bad faith of the Respondent and declared the Disputed Mark to be invalid accordingly.
1) The filing date of the invalidation had exceeded the five-year time limit. The Disputed Mark has been registered for more than ten years and has been put into actual business use.
2) The Applicant does not have prior rights in Class 32 and its trademarks have not been recongized as well-known trademarks in core class.
In connection with the disputes and the difficulties in this case, we make the following strategies:
1) We compared the two parties’ marks in the aspects of overall appearance, word composition and pronunciation to prove the similarity. Although the designated goods of two parties’ marks do not constitute statutory similar goods, both of them belong to foods and beverages. We fully discuss the relevance of the goods in terms of functional use, production sector, consumption channel and target consumers. Also, we submitted the previously received favorable decisions in support. According to the consistent examination criteria, the Dispute Mark should also be recognized to be similar to the Applicant's prior marks and declared to be invalid.
2) The Applicant submitted evidence regarding the popularity of its prior cited marks to prove the OREO and 奥利奥(OREO in Chinese) marks had been used and promoted extensively and commercially for a long period of time before the application date of the Disputed Mark, and enjoyed a high reputation and popularity among the Chinese public, reaching the level of well-known marks. The Applicant also submitted rulings/judgements of the CNIPA/IP courts in recognizing the reputation of the Applicant's marks to support the claim of popularity.
3) As a competitor of the Applicant in the same business field , it cannot be a coincidence that the Respondent applied for a number of "澳利澳"(Ao Li Ao in Chinese)、“ 澳利澳and OREO” marks which are highly similar the Applicant's “OREO” series marks. In addition, the Respondent also applied for the marks “Bai Shi Ji Xiang in Chinese”、”Ice Tea in Chinese”、“Wei Le Bao in Chinese”、“Di Wu Ji in Chinese”, etc. which are also copied from other famous beverage brands/sub-brands. The Respondent has the malice of copying the Applicant's prior marks and others' prior famous trademarks and free-riding on the goodwill of famous brands.
The reference significance of this case is as follows.
The filing date of the invalidation has exceeded the 5-year statutory time limit for an invalidation action filed by non-well-known trademark owners regulated by Article 45 of China Trademark Law. Also, the Applicant does not have prior rights in Class 32 and its trademarks have not been recongized as well-known trademarks in its core-classes. Under such circumstance, considering the bad faith of the Respondent in copying the Applicant’s prior marks and other famous beverage brands, the CNIPA declared the Disputed Mark to be invalid according to Article 41 of China Trademark Law[2001], Articles 41(1), 44(1)(3) and 46 of China Trademark Law. This case has proviced significant reference for the non-well-known trademark owners to break through the five-year statutory time limit for filing invalidation actions, mainly relying on the Repondent’s bad faith to win the invalidation case. This case indicates that the prior right owners are not subject to the five-year time limit for the cases in which the Respondent has obvious bad faith that can be supported by Article 44 of China Trademark Law.
