The PRC Supreme People's Court has rendered verdict in
favour of DSM Dyneema B.V. and DSM IP Assets B.V. in the re-trial
of the administrative lawsuits over the opposition against the
trademark No. 4115813
DSM Dyneema B.V. and DSM IP Assets B.V., both companies
established under the laws of the Netherlands (hereinafter jointly
referred to as "DSM"), are the owner of the registered
trademarks Dyneema® in Latin and Dyneema® in Chinese, i.e.
迪尼玛® and 大力马® and
®. DSM also owns exclusive rights onto the word mark
Dyneema® as a trade name.
After re-trial of the administrative lawsuits over the
opposition against the trademark No. 4115813 Dyneema and Logo (
) in Class 28, the PRC Supreme People's Court has rendered the
verdict, ruling that the opposition against the trademark No.
4115813 Dyneema and Logo (
) in Class 28 is justified and the trademark No. 4115813 Dyneema
and Logo is rejected for registration on the grounds:
1. The goods "fishing tackle" covered by the opposed
mark No. 4115813 Dyneema and Logo (
) in Class 28 and "semi-processed plastic substances in the
form of fibres and threads"covered by the cited prior mark
Dyneema constitute similar goods. Therefore, the opposed mark No.
4115813 Dyneema and Logo (
) in Class 28 on "fishing tackle" violates Article 28 of
the old Chinese Trademark Law.
2. The evidence submitted by DSM can prove that DSM has the
rights to use the copyrightable work
as a trademark. Thus, DSM can be an interested party to claim
copyrights onto the Dyneema and Logo, i.e.
. The opposed mark is
identical to the prior copyrightable work
, and the third party, i.e. the applicant for the opposed mark, has
never given a reasonable explanation about ownership of the
copyrightable work
. Therefore, the opposed mark infringes
on the prior copyright of others and shall not be approved for
registration according to Article 31 of the old Chinese Trademark
Law.
The verdict issued by the PRC Supreme People's Court in our favour is a long-awaited reward for DSM's perseverant efforts in protecting the trademark Dyneema, demonstrates the fair and credible judicial protection of IP rights in China and gives trademark owners more confidence in the IP protection regime in China in the future.
It is noteworthy that the PRC Supreme People's Court
released the SPC White Paper on IP Protection 2018 on April 17,
2019. Simultaneously with the White Paper, the PRC Supreme
People's Court announced the 10 leading IP cases and 50 typical
IP cases in China in 2018. These cases involved new legal issues
and new thoughts on the application of law on IP cases in China.
The re-trial of the administrative lawsuit over the opposition
against the trademark No. 4115813 Dyneema and Logo (
) in Class 28 has been included by the PRC Supreme People's
Court as the case No. 45 in the 50 typical IP cases in China in
2018.
The SPC White Paper on IP Protection 2018 can be found at the SPC website at http://www.court.gov.cn/zixun-xiangqing-153242.html and the 10 leading IP cases and 50 typical IP cases in China for the year 2018 can be found at the SPC website at http://www.court.gov.cn/zixun-xiangqing-153252.html.
Sources：Website of the PRC Supreme Court http://www.court.gov.cn/zixun-xiangqing-153252.html
The Supreme Court has published the Annual IP Case Report (2018) – PRC Supreme Court. In this report, the PRC Supreme Court has selected 28 typical cases, which have addressed complicated legal issues and the Dyneema case is listed as the Case 27. The PRC Supreme Court has explained that the Dyneema case has been selected because it sets the rule for determining violation of prior copyrights. The Dyneema rule set by the PRC Supreme Court will serve as guidance in helping the courts and brand owners in China to solve problems in similar cases in the future.
Sources：Website of the PRC Supreme Court https://www.chinacourt.org/article/detail/2019/04/id/3852027.shtml
DSM is the inventor and manufacturer of Ultra High Molecular Weight PolyEthylene (UHMwPE) fiber, which is marketed under the trademark Dyneema®. The Dyneema® UHMwPE fiber offers maximum strength combined with minimum weight. It is up to 15 times stronger than quality steel and up to 40 percent stronger than aramid fibers, both on weight-for-weight basis. The Dyneema® UHMwPE fiber floats on water and is extremely durable and resistant to moisture, UV light and chemicals. The applications of the Dyneema® UHMwPE fiber are therefore more or less unlimited. The Dyneema® UHMwPE fiber is an important component in ropes, cables and nets in the fishing, shipping and offshore industries and is also used in safety gloves for the metalworking industry and in fine yarns for applications in sporting goods and the medical sector. In addition, the Dyneema® UHMwPE fiber is also used in bullet resistant armour and clothing for police and military personnel.
On June 14, 2004, Yuebin LOU, Yuequn LOU, Zhaofa LOU and Junzhe
LAI filed the trademark No. 4115813 Dyneema and Logo in
Class 28, covering such goods as fishing tackle etc.. It was later
on assigned to Yiwu Surui Fishing Tackle Co., Ltd. on December 20,
2018. DSM filed opposition in time against the trademark No.
4115813 Dyneema and Logo on the grounds that it had been filed in
bad faith and its use was likely to result in confusion as DSM has
no business relationship with Yuebin LOU etc. or Yiwu Surui Fishing
Tackle Co., Ltd. and DSM has never authorized Yuebin LOU etc. or
Yiwu Surui Fishing Tackle to file or use the trademark Dyneema®
in Latin or Chinese. Unfortunately, DSM did not prevail in the
opposition proceedings before the PRC Trademark Office, TRAB
(Trademark Review and Ajudiciation Board) as well as in the
subsequent administrative lawsuits before the court of first
instance and the appellate court. In order to protect its
legitimate rights and the consumer interest, DSM has requested the
PRC Supreme Court to conduct re-trial on the administrative
lawsuits over the opposition against the trademark No. 4115813
Dyneema and Logo (
).
The opposed trademark No. 4115813 Dyneema and Logo (
)
On April 10, 2019, the PRC Supreme People's Court issued the re-trial verdict, overruling the lower courts' verdicts and the decisions issued by the PRC Trademark Office and TRAB (Trademark Review and Adjudication Board) and holding that the opposition against the trademark No. 4115813 Dyneema and Logo in Class 28 is justified and the trademark No. 4115813 Dyneema and Logo is rejected for registration.
Yiwu Surui Fishing Tackle Co., Ltd. filed the trademark No.
26788317 DYNEEMA in Class 28 on such goods as fishing tackles and
fishing line etc. on October 10, 2017. DSM has lodged the
opposition against the trademark No. 26788317 DYNEEMA in time. In
light of the PRC Supreme Court's verdict in favour of DSM on
the opposition against trademark No. 4115813 Dyneema and Logo (
), DSM is looking forward to the favourable outcome in the
opposition against the trademark No. 26788317 DYNEEMA and sustained
support and more favourable verdicts or decisions from the Chinese
courts and government agencies in trademark protection in future.
To this end, DSM will continue the proactive efforts in fighting
the trademark squatters and safeguarding its IP rights and the
consumer interest.
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.
