Many shoppers are familiar with the France-based shop Auchan. What is little known is that this international retail giant has been entangled in a trademark dispute with a local trademark agency over the trademark "欧尚" (Note: official Chinese translation of Auchan).
The other protagonist, Caiyuan Trademark Agency, located in Tai'an and established on November 10, 2003, Shandong, is a bona fide firm representing clients in trademark matters. On June 17, 2011, Caiyuan filed for the registration of the trademark in question with the Trademark Office (TMO), requesting certified to be used on Class 29 goods including processed betel nut, soy milk (milk substitute), vegetable salad, jelly, processed melon seeds, dried edible fungi and tofu products.
On May 20, 2012, the TMO preliminarily approved and published the trademark in question.
Within the statutory opposition period, Auchan lodged an opposition request to the TMO on August 20, 2012, claiming that the trademark in question and its previously registered trademark "欧尚" constituted similar trademarks and Caiyuan Office maliciously squatted its prior trademark which carries certain reputation, and infringed its namesake trade name.
After examination, the TMO made an opposition ruling on October 22, 2013, holding that the reason for opposition proposed by Auchan is groundless and approved registration of the trademark in question. The disgruntled Auchan then sought review at the Trademark Review and Adjudication Board (TRAB) on November 15 of the year instant.
On January 30, 2015, the TRAB made a reexamination decision, holding that Caiyuan is a trademark agency, and the designated goods on which the trademark in question is used are beyond the scope of its trademark agency services, a clear violation of "the trademark agency shall not apply for registration of other trademarks except for trademark registration for its agency services", prescribed by Article 19(4) of the Trademark Law. In this connection, the TRAB rejected the registration of the trademark in question.
Caiyuan then filed a lawsuit to Beijing Intellectual Property Court, claiming that the clause is a newly-added provision in the current trademark law passed on August 30, 2013. According to the principle of non- retroactivity, this provision shall not bind the trademark in question.
After hearing, Beijing IP Court held that the trial of the relevant right to sue and the party qualification should be applied by the now-obsolete trademark law after second amendment. The trial of the other issues in the case, however, should be tried by the current legislation, meaning that Caiyuan's act of registering trademark in its own name should be subject to the restrictions provided in Article 19, paragraph 4 of the current Trademark Law of China. As a trademark agency, Caiyuan did not abide by laws and administrative regulations, and did not maliciously squat other people's trademarks by taking advantage of the status of another party's trademark, a knowledge gained through the very line of work it engages in. Such act violated the trademark administration order of the nation while failing the principle of good faith and clearly violating the abovementioned provision. The trademark in question shall not be approved for registration. On December 27, 2017, Beijing IP Court rejected Caiyuan's claim.
Caiyuan then appealed to Beijing High People's Court. The Court affirmed the original judgment.
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