The China National Intellectual Property Administration (CNIPA) published a list of nine exemplary trademark proceedings, including five trademark opposition ones, one review one, and three invalidation ones. Article 2 of the Trademark Law of the People’s Republic of China provides that in principle, the Trademark Office of the CNIPA is responsible for the registration and management of trademarks overall, and the Trademark Review and Adjudication Board (TRAB) of the State Administration for Market Regulation (SAMR) is responsible for trademark disputes, mainly invalidation proceedings challenging registered trademarks. To be more exact, in practice, the Trademark Office handles reexamination proceedings involving registrations and invalidation proceedings involving practices violating Article 4, 10, 11, 12, and Article 19 Paragraph 4 of the Trademark Law and of securing registrations by fraud or any other improper means; the TRAB handles invalidation proceedings other than those in the Trademark Office’s charge.

Trademark opposition proceeding 01

Opposed Trademark Nos.: 37486163 and 37491462

Opposing party: Valeo

Trademark applicant: Dongguan Zhikeban Trading Co., Ltd. (东莞市智可班贸易有限公司)

Cause of action: Similar trademarks

Dongguan city, Guangdong province-based Zhikeban filed applications for registration of the Trademark No. 37486163 “法奥雷 (Valeo’s Chinese transliteration)” and the Trademark No. 37491462 “法奥雷” for goods and services in Class 21 and Class 24 in 2019. Valeo opposed Zhikeban’s registration applications on the basis that the Chinese company’s trademarks being applied for were similar to the “Valeo” and “法奥雷” trademarks owned by Valeo in China. Valeo is a French global automotive supplier founded in 1923 and headquartered in France, listed on the Paris Stock Exchange. Valeo registered its Trademark No. 4651834 and No. 4651830 for goods and services in Class 6 and Class 7 in 2018. The Trademark Office found that Zhikeban’s trademarks and Valeo’s trademarks were not similar in a strictly technical sense since they fell in different classifications, while Zhikeban and its affiliated companies owned a large number of trademarks same as or highly similar to other well-known trademarks, most of which were not committed to commercial use. Affirming Valeo’s status as a well-known trademark and Zhikeban’s bad faith registration of other well-known trademarks, the Office granted Valeo’s opposition and refused Zhikeban’s 2019 applications.

Trademark opposition proceeding 02

Opposed Trademark No.: 35539392

Opposing party: Huayuan Brand Protection and Development Society (花垣县品牌保护发展学会)

Trademark applicant: Huayuan County Shilan Town Zila Village Jinxiu Agricultural Cooperative (花垣县石栏镇子腊村锦秀农业专业合作社)

Cause of action: Trademarking geographical indications (GIs) in prior use

Jinxiu Cooperative in 2018 filed an application for registration of the Trademark No. 35539392 “子腊贡米 (Zila Royal Tribute Rice)” for goods and services in Class 30. Zila Village is a primary administrative unit in Hunan province. It is under Shilan town of Huayuan county of Xiangxi Autonomous Prefecture. A high-quality rice variety is grown in certain areas of Huayuan county and “花垣县子腊贡米 (Huayuan Zila Royal Tribute Rice)” had therefore been assigned to the variety as a GI, which was administered by Huayuan Brand Protection and Development Society. GIs identify a good as originating from a particular place. By contrast, a trademark identifies a good or service as originating from a particular company. A trademark often consists of a fanciful or arbitrary sign. In contrast, the name used as a GI is usually predetermined by the name of a geographical area. The Society opposed the Cooperative’s registration application on the basis that a prior existing GI should not be registered as a similar trademark to arouse likely consumer confusion. The Trademark Office granted the opposition and refused the Cooperative’s application invoking Article 10 Paragraph 1 Item 7 and Article 35 of the Trademark Law.

Trademark opposition proceeding 03

Opposed Trademark No.: 42073902

Opposing party: China Central Television (CCTV)

Trademark applicant: Henan Good Character School Cultural Communications Co., Ltd. (河南好字学堂文化传播有限公司)

Cause of action: Prior user rights

Henan province-based Good Character filed applications for registration of the Trademark No. 42073902 “诗词大会 (Poetry Congress)” for goods and services in Class 16 including mainly paper, cardboard and certain goods made of those materials, as well as office requisites. Chinese state-owned flagship broadcaster CCTV opposed Good Character’s registration application claiming its prior user rights to “诗词大会” as part of the name of its signature show Chinese Poetry Congress (《中国诗词大会》). Chinese Poetry Congress was an ongoing game show created and presented by CCTV that tested competitors’ memory and reciting of Chinese poetry. The show’s first airing was in 2016 and 50 episodes in 5 seasons of it had been produced and aired to great acclaim as of 2020. The Trademark Office affirmed CCTV’s prior user rights and Chinese Poetry Congress’s status as a well-known brand. The Office granted the opposition and refused Good Character’s application invoking Article 32 of the Trademark Law. There has been no general rule for the protection of show names in China. Courts shall use discretion to determine if titles of creative works, including show names, and names of characters or depictions of characters can function as trademarks protectable under trademark law.

Trademark opposition proceeding 04

Opposed Trademark No.: 33696336

Opposing party: Shanghai Ruiya Industry Co., Ltd. (上海睿雅实业有限公司)

Trademark applicant: Shenzhen Woyaofa Technology Co., Ltd. (深圳我要发科技有限公司)

Cause of action: Bad faith registration

Shenzhen-based Woyafa filed applications for registration of the Trademark No. “Lab Hercules” for goods and services in Class 5 including mainly pharmaceuticals and other preparations for medical or veterinary purposes in 2018. Shanghai-based Ruiya opposed Woyaofa’s registration application on the basis that Woyaofa’s trademark being applied for were similar to the “Lab Hercules” trademarks owned by Ruiya. Ruiya, a manufacturer of health and nutrition products, registered the “Lab Hercules” trademarks in Class 30 including mainly foodstuffs of plant origin prepared for consumption or conservation as well as auxiliaries intended for the improvement of the flavour of food in 2012 and 2018. The Trademark Office found Lu was Woyaofa’s legal person as well as that of two trademark agencies, one of which filed for the registration application of the “Lab Hercules” trademark on behalf of Woyaofa. The Office affirmed Woyaofa’s bad faith registration conducted with the connected operation of the three affiliated companies by Lu. The Office granted the opposition and refused Woyaofa’s application invoking Article 14 Paragraph 4 of the Trademark Law.

Trademark opposition proceeding 05

Opposed Trademark No.: 33696336

Opposing party: Qichun Seven Oranges Cultural Media Co., Ltd. (蕲春七个桔儿文化传媒有限公司)

Trademark applicant: Shaoxing Hengxi Trading Co., Ltd. (绍兴恒熙商贸有限公司)

Cause of action: Bad faith registration　

Hengxi filed applications for registration of the Trademark No. 33696336 “7个桔儿 (Seven Oranges)” for goods and services in Class 35 including advertising; business management; business administration; office functions. Qichun county-based Seven Oranges opposed Hengxi’s registration application claiming its prior user rights to the “7个桔儿” name. Incorporated in 2019 and based in Qichun county of Huanggang city of Hubei province, Seven Oranges had been working as a multi-channel network (MCN) producing and distributing short-form videos in a Huanggang dialect in exchange for a percentage of the ad revenue from various video hosting platforms. The particularities of the company’s content had won it high recognition on the market. The Trademark Office agreed with Seven Oranges’s arguments that the scopes of use of the trademark Hengxi applied for and Seven Oranges’s brand name were highly connected and overlapped to some degrees to likely cause consumer confusion. The Office granted the opposition and refused Hengxi’s application invoking Article 32 of the Trademark Law.

Trademark reexamination proceeding

Opposed Trademark No.: 41971424

Trademark applicant: Guo

Cause of action: Similar trademarks　

Guo filed applications for registration of the Trademark No.: 41971424 “冰墩熊Temperament Bear” for goods and services in Class 42 for Computer & Software Services & Scientific Services. The Trademark Office rejected the application on the basis that the trademark being applied for was similar to the “童年Tong Nian” trademark for goods and services in Class 42 registered by Childhood (Wuhan) Technology Co., Ltd. (童年时代（武汉）科技有限公司) invoking Article 30 of the Trademark Law. In the reexamination proceeding, invoking Article 10 Paragraph 1 Item 8 of the Trademark Law, the Office rejected the application again on the basis of its similarity with the name of Bing Dwen Dwen (Chinese: 冰墩墩), the official mascot of the 2022 Beijing Winter Olympics. In response to Guo’s defense further delivered, the Office confirmed likely confusion between the trademark he applied for and the Olympic mascot as the cause for rejection a second time, while dismissing the similarity between it and the “童年Tong Nian” trademark. The Office invoked the Regulations on Protection of Olympic Symbols and the Trademark Law as the legal basis.

Trademark invalidation proceeding 01

Invalidated Trademark No.: 16647402

Invalidation filing party: Bureau National Interprofessionnel du Cognac (BNIC)

Trademark owner: Zhejiang Zhenjiu Network Technology Co., Ltd. (浙江臻酒网络科技有限公司)

Cause of action: Bad faith registration

Zhenjiu registered the Trademark No. 16647402 “康涅克 (Cognac’s Chinese transliteration)” in Class 33 including alcoholic beverages (except beers), raw and concentrated juice of alcoholic beverages in 2016. Cognac is a variety of brandy named after the commune of Cognac, France. It is produced in the surrounding wine-growing region in the departments of Charente and Charente-Maritime. The French government assigned a geographical indication sign to Cognac in 1999, which was administered by the BNIC, and the Chinese government affirmed the protection of Cognac as a foreign GI in China in 2009. The BNIC filed an application for review of the “康涅克” trademark owned by Zhenjiu for invalidation. The Trademark Office affirmed the BNIC’s prior user rights and Cognac’s and its Chinese transliteration 康涅克’s status as well-known signs in China. The Office also found Zhenjiu free-rode on Cognc’s goodwill in the advertising about the 康涅克-trademarked wines on Zhenjiu’s website. The Office confirmed Zhenjiu’s bad faith registration and invalidated the registered trademark.

Trademark invalidation proceeding 02

Invalidated Trademark No.: 29135506

Invalidation filing party: McDonald's Corporation (麦当劳公司)

Trademark owner: Hong Kong Yufeng Group (Interntional) Co., Ltd. (香港誉丰集团（国际）有限公司)

Cause of action: Bad faith registration

HKSAR-based Yufeng registered the Trademark No. 29135506 “麦乐兹MAILEZI” in Class 30 including mainly foodstuffs of plant origin prepared for consumption or conservation as well as auxiliaries intended for the improvement of the flavour of food in 2019. McDonald's Corporation in 2020 filed an application for review of the registered trademark owned by Yufeng for invalidation claiming its prior user rights to the combination of two Chinese characters “麦乐” in its registered trademarks such as Trademark No. 14166399 “麦乐送,” No. 17380138 “麦乐送,” No. 6608168 “麦乐鸡,” and No. 21966281 “麦乐酷.” The Trademark Office found Ma was Yufeng’s legal person as well as that of two Guangdong province-based trademark agencies, one of which filed for the registration applications of the “麦乐兹MAILEZI” trademarks on behalf of Yufeng. Finding that over 400 registered trademarks registered by several companies owned by Yufeng’s founder Ma were similar to other well-known trademarks remaining commercially unused and being offered for sale, the Office confirmed Yufeng’s bad faith registration. The Office invalidated Yufeng’s trademark invoking Article 19 Paragraph 4 and Article 44 Paragraph 1 of the Trademark Law.

Trademark invalidation proceeding 03

Invalidated Trademark No.: 29135506

Invalidation filing parties: Yao Siwei and Huawei Technologies Co., Ltd.

Trademark owner: Guo

Cause of action: Bad faith registration

Guo registered the Invalidated Trademark No. 29135506 “姚安娜 (pinyin: Yao Anna)” for goods and services in Class 3 including mainly non-medicated toiletry preparations, as well as cleaning preparations for use in the home and other environments in 2019. Yao Siwei and Huawei filed an application for review of the registered trademark owned by Guo for invalidation claiming their prior user rights to the “Yao Anna” name. Yao Anna is the stage name of Yao Siwei, the second daughter of Chinese tech giant Huawei’s founder Ren Zhengfei. The “Yao Anna” name functions as a trademark under Chinese trademark law on the basis of Yao Siwei’s status as a public figure as well as a performing artist. The Trademark Office found that Yao Anna was the spokesperson of a cosmetic product, which fell under the scope of use of the trademark registered by Guo and there existed a substantial likelihood of consumer confusion. The Office affirmed Guo’s bad faith registration and invalidated his registered trademark invoking Article 32 of the Trademark Law.

The full text is available here.

中文新闻线索：

https://mp.weixin.qq.com/s/mvcWT4FJyre051IqU--BTA

https://mp.weixin.qq.com/s/PB4sTHKpVPyh5Z2GkQw0OQ

https://www.wipo.int/geo_indications/en/faq_geographicalindications.html

http://m.0755sb.com/news-details-3172.html

https://www.spiritshunters.com/cognac/the-various-crus-in-the-cognac-gi/

http://www.ipforefront.com/m_article_show.asp?id=1861&BigClass=%E8%B5%84%E8%AE%AF

https://m.cqn.com.cn/videos/content/2010-02/25/content_400159.htm

https://www.sohu.com/a/522955154_121303979