China: Consideration Of Malicious Intentions Of Trademark Applicant In Protection Of Prior Used Trademark

---Prior used famous air purifier brand IQAir obtains protection from People's Court of China

[Case]

(2015) Jing Zhi Xing Chu Zi No. 2774 Case of Administrative Dispute over Trademark Invalidation between the Plaintiff XXX Enterprise, the Defendant Trademark Review and Adjudication Board of the State Administration for Industry and Commerce of the People's Republic of China ("TRAB") , and the Third Party XXX Co., Ltd.

[Brief Introduction to the Case]

Based on the grounds that that the Third Party's trademark "IQ Air" ("Disputed Trademark") is pre-emptive registration by improper means of the Plaintiff's trademark IQAir, which is prior used and has certain influences on air purifiers, etc., the Plaintiff XXX Enterprise requested the TRAB to cancel the registration of the Disputed Trademark. The TRAB held that the evidence submitted by XXX Enterprise are not sufficient to prove that before filing date of the Disputed Trademark, XXX Enterprise had prior used trademark similar to the Disputed Trademark and obtained certain influences on the products identical or similar to the goods covered by the Disputed Trademark. Therefore, the TRAB maintained the registration of the Disputed Trademark. XXX Enterprise was not satisfied with the decision, and appealed to Beijing Intellectual Property Court.

In the appeal, XXX Enterprise submitted evidences proving prior use of the trademark IQAir on air purifiers in China before the filing date of the Disputed Trademark, and meanwhile emphasized that, 1) Whether a prior used trademark has certain influences and if the applicant of a Disputed Trademark has malicious intentions are two necessary conditions in deciding whether the Disputed Trademark constitutes the pre-emptive application for registration by improper means of a trademark having been prior used and having certain influences; 2) where the applicant of the Disputed Trademark has obvious malicious intentions, then the trademark used in China and known by relevant public within a certain scope shall be recognized as a trademark already used and having certain influences; 3) firstly, the Third Party in this case filed trademark applications identical with other foreign famous air purifiers brands on the same day when filing the Disputed Trademark, and has been continuing filing such trademarks till now; secondly, both the Third Party and XXX Enterprise are manufactories of the products like air purifiers, etc., and the Third Party paid sustained attention to the enterprises with certain popularity in the same industry and their brands; and thirdly, the Third Party alleged that her brand was "Swiss Brand" in promotion for many times, while most of XXX Enterprise's IQAir air purifies were manufactured in Switzerland. The above facts could sufficiently prove the Third Party's malicious intention in filing the Disputed Trademark.

The Court supported the Plaintiff's abovementioned grounds, recognized that the application for the Disputed Trademark on the products "air conditioning equipment; air sterilizers; air filtration equipment; gas purification equipment; air processing and ionization equipment; air purification devices and machines; air deodorizing apparatuses" constituted the pre-emptive registration by improper means of another person's trademark already used and having certain influences, as stipulated in Article 31 of the Trademark Law 2001, and required the Defendant to make a new invalidation decision to cancel the registration of the Disputed Trademark on the abovementioned goods.

[Keystone of Judgment]

1. To decide whether the Disputed Trademark constitutes the circumstance of pre-emptive registration by improper means of another person's trademark prior used and having certain influences, as regulated in Article 31 of the Trademark Law 2001, it should firstly be decided whether the Disputed Trademark and the prior used trademark constitute similar trademarks, and whether the goods covered by the Disputed Trademark and the goods on which the prior used trademark is designated constitute similar goods; and secondly, the trademark actually used in China and known by relevant public within a certain scope shall be recognized as a trademark already used and having certain influences.

2. Where the trademark applicant knows or should have known other person's prior used trademark, but still executes pre-emptive registration of this trademark, this applicant may be recognized to have malicious intention. In this case, under the circumstance of knowing the trademark already used by other person and having certain influences, the Third Party still applies for the registration of a trademark nearly the same as the prior trademark on similar products, and the malicious intentions are obvious. Therefore, the application for the registration of the Disputed Trademark violates the provisions of Article 31 of the Trademark Law 2001.

[Typical Significance]

The typical significance of this case rests with that, this case involves how to comprehensively consider the two elements "whether a trademark is prior used and has certain influences" and "the malicious intentions of the Disputed Trademark applicant" when recognizing whether the Disputed Trademark constitutes pre-emptive application for registration by improper means of a trademark already used by other person and having certain influences. The two elements, namely trademark applicant's malicious intentions and the other party's prior use are interactive. Under the circumstance that the Disputed Trademark applicant has obvious malicious intentions and the trademark already used in China and known by relevant public within a certain scope shall be recognized as a trademark already used and having certain influences.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.