CNIPA Released Typical Trademark Opposition And Review Cases 2024 (Part Two)

On April 26, 2025, the CNIPA released the top 10 typical trademark opposition and review cases of 2024.

(Continued from our July Issue)

4. Guanhuai Trademark Opposition Case No. 71667779

【Basic Facts】

The Opponent: A press

The Opposed: An Anhui-Based Development Group Co., Ltd.

Main Reason of the Opponent: the acts of the opposed involve obtaining registration of the opponent's previous influential trademark by unfair means, which violates Article 32 of the Trademark Law.

The opposed did not make defense within the specified time limit.

Upon examination, the Trademark Office concluded that the disputed trademark is designated to be used in respect of news delivery and electronic transmission services such as news agency services. The evidence from the opponent demonstrates that prior to the application for registration of the disputed trademark, Guanhuai was already available as a client terminal name in multiple APP stores, thus possessing a relatively high level of reputation. The disputed trademark is identical with the opponent's prior used word Guanhuai, and the designated services of the disputed trademark are similar to those previously provided by the opponent. The act of the opposed to apply for the registration of the disputed trademark constitutes an act of preemptively registering in bad faith a trademark that another party has previously used and that has certain influence, and the opposed violated the provisions of Article 32 of the Trademark Law. The disputed trademark is refused for registration.

【Significance】

This case is a typical example of protecting the name of a news APP under the digital economy. New media names have a high socioeconomic value, and government new media serve both governmental and livelihood functions, symbolizing the credibility of the government. Based on a thorough consideration of the communication and radiation characteristics of the APP itself, this case accurately determines the establishment of trademark squatting acts, effectively maintaining the image of mainstream media and the rights of the user, and supporting the healthy development of government new media platforms.

5. Xiaofang Kiln Trademark Opposition Case No. 69778265

【Basic Facts】

The Opponent: A Ceramic Art Company

The Opposed: Someone by the surname Feng

Main Reason of the Opponent: the disputed trademark is similar to the trademarks Xiaofang and Xiaofang Kiln previously registered by the opponent, and violates the provisions of Article 30 of the Trademark Law.

Upon examination, the Trademark Office concluded that the disputed trademark Xiaofang Kiln is designated to be used in respect of firing of pottery and similar services in Class 40. The opponent cited prior registered Xiaofang trademarks No. 7746889 and Xiaofang Kiln trademark No. 7746890, which are approved for use in respect of products such as teapots and tea cups in Class 21. Evidence in the case shows that Mr. Xiaofang CAI, the founder of Xiaofang Kiln, has been engaged in firing of imitation ancient porcelain for decades, and through promotion and use, the Xiaofang Kiln trademark has gained significant reputation in the ceramics industry. The goods or services in respect of which both parties' trademarks are used are highly related in terms of functionality, purpose, and characteristics, making them similar goods or services. The trademarks, also similar in terms of lexical composition and pronunciation, constitute similar trademarks used in respect of similar goods or services. The disputed trademark is refused for registration.

【Significance】

This case is a typical example of appropriately breaking through the similar relationships outlined in the Classification of Goods and Services for the Purposes of Registration of Marks to prevent market confusion and misidentification. The case gives special consideration to the influence of the opponent's Xiaofang Kiln trademark in the ceramics industry and factors such as cultural heritage, providing legal protection for the Xiaofang Kiln trademark. This effectively safeguards the legitimate rights of the trademark proprietor and positively promotes the propagation of the fine Chinese traditional culture.

6. BRTV Beijing Time Trademark Refusal Reexamination Case No. 74447834

【Basic Facts】

The Applicant: A Beijing-based TV outlet

Main Reason of the Applicant: the BRTV Beijing Time has gained significant reputation and influence through extensive use, which has established a unique correspondence with the applicant, and possessing secondary meaning and distinctiveness. BRTV is an abbreviation of the applicant's English name, and when combined with the phrase Beijing Time, the overall trademark has acquired distinctiveness for registration and use as a trademark.

Upon examination, the Trademark Office concluded that the BRTV Beijing Time trademark filed for application is, as a whole, somewhat different from the administrative division name Beijing, and does not constitute the situation described in Article 10, paragraph two, of the Trademark Law. The evidence from the applicant proves that BRTV Beijing Time, which has been used extensively and for a long time, and has gained significant reputation, has formed a unique correspondence with the applicant, and is capable of distinguishing the source of services, thus possessing the distinctiveness required for trademark registration, and does not violate the provisions of Article 11, paragraph one (3), of the Trademark Law. The application for the registration of the trademark is preliminarily approved.

【Significance】

The applicant in this case plays an important role in cultural promotion and political public opinion guidance. The preliminary approval of the trademark fully recognizes the applicant's leading position in cultural communication and political public opinion, reflecting protection and support for media brands, which positively contributes to the healthy development of the media industry in China. During the review, the use of the trademark by the applicant was fully considered, establishing a unique correspondence between the trademark and the applicant, demonstrating a flexible and reasonable application of the distinctiveness provisions of the trademark law, which has significant value of reference for dealing with future similar cases.

7. Device Trademark Invalidation Case No. 42820164

The Opponent: A cultural and tourism branch of a Shanghai-based company

The Opposed: A Shanghai-based industrial company

Main Reason of the Opponent: The applicant believes that the disputed trademark infringes upon its prior rights, and is likely to cause confusion among the public with respect to the source of the goods or services. The opposed has also fraudulently registered trademarks that are identical with or similar to the names of other well-known scenic spots, which constitutes obtaining registration by other unfair means.

Upon examination, the Trademark Office concluded that the disputed trademark is substantially similar to the works in which the applicant has prior copyright, thus infringing upon the opponent's copyright. The opposed not only copied the works in question, but also registered multiple trademarks that are identical with or similar to the names of spots of tourist attractions, clearly indicating an intention to copy and plagiarize. This registration by unfair means not only leads the relevant sector of the public to mistakenly identify the source of goods or services but also disrupts the normal order of trademark registration administration and the fair competition environment of the market.

【Significance】

In this case, with multiple legal provisions applied, arguments were made from different perspectives that the disputed trademark should be declared invalid. It confirms that the secondary creations of elements from cultural heritage sites are eligible for the copyright protection, promotes the legal use of cultural resources, and provides legal support for derivative creations in cultural heritage. Also, the case highlights the review standard of legitimacy of trademark registration purposes, curbing trademark registration activities that seek to exploit public resources, mislead the public, and disturb the order of trademark registration, thus preventing unfair competition in the market and ensuring a balance between the private trademark rights and public interests.

8. Childhood Time Trademark Invalidation Case No. 8223462

【Basic Facts】

The Opponent: Someone by the name Clark

The Opposed: A Nanjing-Based Biotechnology Co., Ltd.

Main Reason of the Opponent: The opposed has a distribution relationship with the opponent, and without the latter's authorization, the opposed has applied for registration of a large number of its trademarks, artistic works, and domain names, including, among other thing, Childhood Time, CHILDLIFE, and the red heart graphic sign. The opposed, having also plagiarized others' nutritional supplement brands, has obviously acted in bad faith.

Upon examination, the Trademark Office concluded that during the negotiations for concluding the agency distribution agreement, the opposed and its affiliates were already the second-level distributors of the opponent. Without the latter's consent, the opposed repeatedly registered the Childhood Time word and graphic trademarks. After the cooperation between two parties broke up, the opposed transferred the reputation of the CHILDLIFE brand by using Childhood Time，inne, and the red heart graphic sign in combination. The opposed also plagiarized other people's nutritional supplement brands in bad faith. The disputed trademark constitutes a situation as stipulated in Article 41, paragraph one, of the Trademark Law as of 2001, which states that it has obtained the registration by other unfair means.

【Significance】

The disputed trademark has high reputation, the products in respect of which it is used are special, and the market value considerable. Declaring the disputed trademark invalid has dealt a significant blow on the practice of passing off and the malicious registration of the trademark of the company the opposed acted as its agent, clarifying the rights to the Childhood Time trademark. This resolves the issues of trademark infringement and unfair competition at the source, and demonstrates the administrative authority's zero tolerance and determination against profiting from illegal activities. It serves as a model for establishing a market protection framework that strictly protects the intellectual property rights while ensuring public interests.

9. Lantian Boke Trademark Invalidation Case No. 48678713

【Basic Facts】

The Opponent: Someone by the name W·Chen

The Opposed: Someone by the name S·Chen

Main Reason of the Opponent: The opposed is the legal representative of a mechanical manufacturing company, and the opponent a shareholder of that company. The disputed trademark belongs to the company. The opposed registered the disputed trademark in an individual capacity, and with reference to the invalidation case of trademark No. 20291251, Lantian Boke trademark should be declared invalid under Article 15, paragraph one, of the Trademark Law.

Upon examination, the Trademark Office concluded that the evidence on record shows that after the company was dissolved, the opposed received the intellectual property assets, and two-thirds of the shareholders agreed to the opposed registering the disputed trademark. After the company decided to dissolve, the opposed applied to register and used the trademark Lantian Boke. Although the opponent made a shareholder statement objecting to the aforementioned registration, this statement was made after the company had made the decision to dissolve, and the number of the agreeing shareholders did not reach a half. Additionally, the opposed submitted evidence showing that the opponent had previously engaged in embezzlement of duties and illegal transfer of trademarks. In summary, the disputed trademark does not violate Article 15, paragraph one, of the Trademark Law. In this case, the opposed obtained evidence of company authorization and majority shareholders' consent, which constitutes new evidence and hence made things different from that related to the conclusions of the previous case.

【Significance】

In this case, the conclusions of the previous case were not mechanically adopted, but rather new evidence and other evidence was considered comprehensively, thus ensuring the equal protection of the parties' interests. This reflects the basic principle of fact-based review and adjudication in trademark examination. Also, this case combines the intention of the company's shareholders with the actual use of the trademarks by the parties involved, confirms trademark ownership, and provides a precedent and reference for dealing with future similar cases.

10. CVF and Device Trademark Invalidation Case No. 38247153

【Basic Facts】

The Opponent: The Office of an Organizing Committee of a Technology Expo in China

The Opposed：A Shouguang City-Based Packaging Company

Main Reason of the Opponent: The cited trademark CVF SHOUGUANG serves as the logo for the China (Shouguang) International Vegetable Expo, and had already gained a certain level of influence prior to the filing date of the disputed trademark. The disputed trademark is highly similar to the cited trademark, and there is a close relation between the goods and services, which is likely to cause confusion and misrecognition among the relevant sector of the public.

Upon examination, the Trademark Office concluded that the disputed trademark is basically identical with the cited trademark in the distinctive part. The newspaper, rental of sales display racks in respect of which the disputed trademark is approved to be used are closely related to those of the cited trademark in terms of target sales customers and service content and other services of organizing commercial or advertising trade fairs in respect of which the disputed trademark is approved to be used. Also, both parties are domiciled in the same region, and the cited trademark has certain reputation. The coexistence of the two, likely to cause confusion, constitutes the situation referred to in Article 30 of the Trademark Law.

【Significance】

The case is not limited to the inherent classifications set forth in the Classification of Goods and Services for the purposes of Registration of marks; instead, it comprehensively considers factors such as the trademark similarity, relevance of goods and services, well-knowingness of the prior mark, and the subjective bad faith of the opposed, providing a cross-class protection for the prior trademark and reflecting an overall determination of the likelihood of confusion. As a typical case involving protection of the commercial logo at a national agricultural expo, this case vividly exemplifies the practice of intellectual property protection in the agricultural sector, upholding the core legislative spirit of preventing market confusion, effectively combating "brand ambushing" acts, and contributing to the high-quality agricultural development in China.

Source: the China Intellectual Property News