India: Clensta Emerges Victorious In China –CNIPA Favours Indian Mark In Opposition Dispute

BACKGROUND

Clensta" is an Indian startup in association with IIT Delhi who have been working to create innovative waterless healthcare solutions to make hygiene accessible to public at large with the aim to create products that promote complete and instant Personal Hygiene without the use of water.

The dispute in the present matter before CNIPA arose with respect to Clensta"'s registered mark "CLENSTA". Clensta" (hereinafter, 'the Opponent') filed an opposition against trademark applicationCN mark No. 34395297filed before the Trademark Office(China)seeking to register the mark "Clensta"(hereinafter, 'the opposed mark') in Class 3.

GROUNDS OF OPPOSITION

Article 30 of the China's Trademark Law states, "Any person may, within three months from the date of the publication, file an opposition against the trademark that has, after examination, been preliminarily approved. If no opposition has been filed after the expiration of the time limit from the publication, the registration shall be approved, a certificate of trademark registration shall be issued and the trademark shall be published."¹

In accordance with the said article, the Opponent raised the opposition against the opposed mark on the basis of following grounds:

1. Prior use

The Opponent argued that the mark "CLENSTA" was originally created and used by them. Article 11(3) states that any sign lacking distinctive features shall not be registered as trademark. In pursuance to this, the registration of the opposed mark was liable to be set aside.

2. Association with the mark

The Opponent's further contended that owing to the long-term use by them, the Opponent's mark "CLENSTA" has enjoyed high reputation in China. Consequently, a direct association has been built between the Opponent and the Opponent's mark. Article 13 of China's Trademark Law states, "Where a trademark in respect of which the application for registration is filed for use for identical or similar goods is a reproduction, imitation or translation of another person's trademark not registered in China and likely to cause confusion, it shall be rejected for registration and prohibited from use." The opposed mark, therefore, was liable to be rejected.

3. Mala fide act

The Opponent laid forth the fact that the Applicant of the opposed mark (hereinafter, 'the Applicant') has been in the practice of applying for other trademarks as well which are owned by certain overseas companies. Such acts of the Applicant clearly show the Applicant's obvious bad faith and lack of actual intent of use.

CNIPA'S DECISION

China National IP Administration ("CNIPA"), in pursuance to Article 35 of the China's Trademark Law that provides for examination of application for trademark registration and trademark reexamination in due course,² examined the opposition file by the Opponent and held that:

1. The evidence submitted by the Opponent was insufficient to prove that the Opponent's mark "CLENSTA" was in prior use for the similar goods, viz., "Beauty soap; Shampoos; Dry-cleaning preparations; etc." and has enjoyed high reputation in China before the filing date of the opposed mark.

2. However, upon examination, CNIPA found that, apart from the opposed mark, the Applicant has applied for many trademarks that were observed to be identical with/similar to other prior marks and many of these marks were already facing opposition by the owners of these registered marks. The Applicant was unable to provide the reasonable explanation of origin of those opposed marks.

Thus, the CNIPA held that the Applicant copied and imitated other parties' marks and disrupted fair competition market environment. CNIPA, therefore, According to Articles 30 and 35 of China's Trademark Law rejected the registration of the opposed mark No. 34395297, "Clensta" in Class 3.

Footnotes

1Trademark Law of the People's Republic of China, art. 30 (1983).

2Trademark Law of the People's Republic of China, art. 35 (1983).

Co Author by : Manasvi Sharma, Intern

Originally Published by Khurana & Khurana, December 2020

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