The Trademark Opposition against Skullcandy

Case Brief

Skullcandy is a world-renowned headset & accessory brand. It has registered “SKULLCANDY” trademark in Class 9, Class 25, etc. in China. In 2011, a company (hereinafter the opposed party) in Shenzhen filed a trademark application of “skullcandy” to Trademark Office in Class 25. The trademark passed the preliminary review and was announced.

Skullcandy, Inc. afterwards entrusted Harvesting to raise opposition to Trademark Review and Adjudication Board. Finally we succeeded in rejecting the trademark application of the opposed party.

Harvesting’s Action

After accepting Skullcandy, Inc.’s entrustment, Harvesting promptly searched the status of the trademark applied by the opposed party, and conducted active investigation into its background and basic information. Meanwhile, through further communication with Skullcandy, Inc., we learned that Skullcandy enjoys Internationally-renowned reputation and has relatively high recognition in related domestic public through the long-term advertising and application.

We subsequently made careful comparison and analysis between the opposed trademark and the registered trademark of Skullcandy, Inc., and found that the two trademarks are identical. The reason that the opposed trademark could pass the preliminary review is that the opposed party applied the trademark in different items with that of the latter one. Despite of this, we noticed that there is connection in the function, usage, and consumption goods between the applied items by further comparison. Therefore, it is easy to cause confusion among the consumers.

Based on the above analysis and reason, we filed opposition to Trademark Review and Adjudication Board, who eventually adopted our opposition reasons, and adjudicated rejection of the trademark registration application filed by the opposed party.

Harvesting’s Perspective

Having passed the preliminary review and announced does not mean the successful registration of trademark. Even though the trademark is registered successfully, the interested party can raise opposition within five years.

With the increasing amount of trademark application, bad-faith preemptive registration, and taking advantages of famous brands can be often seen in the trademark application. Lots of world-wide known trademarks fail to register in China in time due to factors such as market positioning and sales area, which led to the preemptive registration. The whole point of the above case is to warn holders of prior rights to attach importance to the trademark registration. If the trademark is preemptively registered, the right holders should entrust professional agencies to promptly raise opposition.