Abstract
We, Kangxin Partners, P.C., on behalf of client,
TRANSCORTANA SL, filed an opposition action against the trademark
"
" (No. 54527315 in Class 25)
on March 14, 2022, and the National Intellectual Property
Administration, PRC ("CNIPA") subsequently examined the
case and decided to reject the opposed mark for registration.
Here, we explore how the Prior use claim (Article 32 of China Trademark Law), as supported by CNIPA in the CORTANA opposition case, can be applied in opposition cases to aid legitimate trademark owners to protect their right.
Summary of the case
In this opposition case, we mainly argued that:
1. The opposed party rushed to file the client's mark,
"" which was prior used and
enjoyed certain reputation before the filing date of the opposed
mark, in violation of Article 32 of China Trademark Law.
2. The opposed party filed the marks including the opposed mark is not for use intention, in violation of principle of good faith of Article 7 as well as Articles 4 and 44.1.
3. The opposed mark infringed the client's prior copyright, in violation of Article 32 of China Trademark Law.
4. The opposed mark infringed the client's prior trade name right, in violation of Article 32 of China Trademark Law.
5. Given the high reputation of the client and their mark, use and registration of the opposed mark may easily lead to confusion and misunderstanding amongst relevant consumers regarding the resource and quality of the goods.
The opposition decision issued by CNIPA on January 30, 2023
confirming that the client has used their trademark "" before the filing date of the opposed
mark and acquired certain reputation. The opposed mark "" is basically same with the client's
mark, "" which has
strong originality and distinctiveness. Therefore, the opposed mark
has violated Article 32 of China Trademark Law regarding "The
applicant should not rush to register a mark in an unfair manner
that is already in use by another party and enjoys substantial
influence."
Comments on this case
As you may know that China adopts the principle of "first to file" concerning trademark, which means that any prior filed mark would bar the later filed mark. Such rule is quite strict which may pose challenge to the true trademark owner who have already used their marks in China but have not registered their marks yet. They may face a risk of infringing other's trademark rights while being unable to register their own marks under such strict rules. To address this issue, Article 32 states that "No trademark application shall infringe upon another party's existing prior rights. Nor shall an applicant rush to register in an unfair manner a mark that is already in use by another party and enjoys substantial influence." This article seeks to remedy the shortcomings associated with implementing strict registration principle. With this Article 32, the true trademark owner will have an opportunity to attack the bad faith trademark filer for better protecting their trademark right.
In this CORTANA opposition case, for adopting to Article 32, "The applicant should not rush to register a mark in an unfair manner that is already in use by another party and enjoys substantial influence", we need to satisfy the following four conditions:
1. The client has prior used their trademark "" before the filing date of the opposed
mark and acquired certain reputation in mainland China.
The evidence, which includes the client's website, clothing
collections from 2014-2022, social media reports, debit notes, etc.
that the client sold the products in China, is sufficient to
demonstrate that the client has used their trademark "" before the filing date of the opposed
mark and acquired certain reputation.
² Tips: the use evidence is crucial important to support the prior use claim. If we can prove that the prior use of the trademark in mainland China and has acquired certain reputation, it will also assist on persuading the examiner to conclude that the disputed party may have known the client's mark before filing the opposed mark and the opposed mark's filing is through improper mean. Therefore, it is recommended to illustrate the certain reputation of the true trademark owners and their marks in the opposition pleading, with supporting evidence, such as contracts, invoices, pictures, press release, orders, packing lists, customs declarations, etc. reflecting the sales and publications of the trademarks and goods.
2. The opposed mark and the client's mark are same or similar.
The client's mark, "" with special design, has acquired
strong originality and distinctiveness. The opposed mark "" is basically same with the client's
mark, "". Thus, there is
no doubt on that, from the CNIPA's perspective, both
parties' mark are "similar marks".
3. The designated goods of opposed mark are same or similar to the goods of the client's mark.
The evidence we submitted above, such as the debit notes and selling information on the client's website could prove that the designated goods of opposed mark are same or similar to these goods of the client's mark.
4. The opposed party filed the client's mark through improper means.
In this case, the attorney gathered evidence and conducted a thorough analysis of the opposed party's improper mean of filing the marks from the business scope, size, number of trademarks filed or registered, list of copied marks as well as introduction of the copied marks to prove the opposed party's improper means in trademark filing.
² Tips: if the disputed party knows or should know that the true trademark owner has been using an unregistered trademark prior to their registration, and they still register it first, this should be considered that the disputed party filed the mark with "improper means". When judging the disputed party's "improper means" following factors can be taken into consideration:
1) The disputed party and the true trademark owner may have had trade or cooperative relations in the past, or they may have communicated for establishing such relationship.
2) The disputed applicant is located in the same geographic area or regionally close to the true trademark owner, or forming a competing relationship within the same industry.
3) The disputed party and the true trademark owner involved in other disputes, therefore, the disputed party should be aware of the true trademark owner and his trademarks.
4) The disputed party and the true trademark owner have internal personnel contacts.
5) The disputed party has a kinship with the true trademark owner.
6) The disputed party has been misleadingly promoting their use of the trademark, which has a certain impact on the reputation and influence of the true trademark owner. They have also coerced said true trademark owner into engaging in trade cooperation with them, and demanding high transfer fees, licensing fees or compensation for infringement from said the true trademark owner.
7) The true trademark owner's mark has strong distinctiveness or high reputation, and the disputed trademark is identical or highly similar to it.
8) Other situation.
Conclusion
If the true trademark owners face the same situation that they have prior used the mark and acquired a certain reputation in mainland China but have not applied for their mark yet, and their mark is rush-filed by a disputed party. Under such situation, in order to better protect their trademark right, the true trademark owners may consider relying on the claim of "prior use of the mark" of Article 32 in the opposition and invalidation actions to attack the disputed mark.
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.
