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An Active Protection Defeats the Trademark Bad Faith Filing
— The Opposition Case of ONIARRI
Under the “Preemptive Registration” rule on trademark system in China, it is not uncommon that some people will conduct bad faith trademark filing of famous brands. What’s worse, a negative, delayed protection measure from the original trademark users may result in handing over the fruit of the trademark and its goodwill to the malicious trademark applicant.
Key article: under the No. 32 Article of Trademark Law, trademark applicant shall neither offence other’s prior right in existence nor conduct bad faith filing via illegitimate means of the trademarks used by others and has influence to public.
Case Review
On January 9, 2014, Lin applied the trademark registration of “
” under No.13881408 to Trademark Office, on the item of “ready-made clothing” under Class 25. The application has passed the preliminary review and has been announced to public on December 13, 2014. We then filed opposition against the trademark as the agent of PW company to Trademark Office.
On January 9, 2014, Lin applied the trademark registration of “
” under No.13881408 to Trademark Office, on the item of “ready-made clothing” under Class 25. The application has passed the preliminary review and has been announced to public on December 13, 2014. We then filed opposition against the trademark as the agent of PW company to Trademark Office.Ø The Two Parties
PW, a Taiwanese company makes its name known to Taiwan and enjoys high popularity in Mainland China for its trend-leading and unique fashion style in ONIARAI series clothes which are loved by consumers.
Lin, a natural person from Taiwan, runs clothing business in Mainland China.
Ø Comparison of the Two Trademarks
The opposed trademark No.13881408 and the cited unregistered trademark “
” from PW Company are compared as below:|
The Opposed Trademark
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The Cited Trademark
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The opposed trademark looks resemble to the cited trademark in appearance, fairly the same in letter combination under the unique writing styles, besides the last but one letter “R” and “A” in each trademark. It is hard to tell the two trademarks apart and they are easily mixed up. The cited trademark from PW Company is applied on clothing products, similar to the “ready-made clothing” registered by opposed trademark. Therefore, these two trademarks can be considered as resembling trademarks.
Ø Analysis and Proposal
Considering that trademark “
” of PW Company is an unregistered trademark in Mainland China, it is more difficult to take protection measures. After full communication with PW Company, we obtained plenty of information and evidence of the trademark usage. Analyses are as bellow:1) The cited trademark “
” is innovative and has been applied into wide usage in Mainland China for long time, enjoying popularity and influence much earlier than the day of opposed trademark was applied.2) Both PW Company and Lin come from Taiwan. The cited trademark has enjoyed great fame in Taiwan before the opposed trademark was registered in Mainland China. Lin conducted bad-faith filing in Mainland China with the knowledge of PW Company’s trademark status.
Moreover, Lin simultaneously applied more than ten other trademarks in different classes to Trademark Office, most of them same or highly resemble to PM Company’s trademarks (they are dealt as other opposition cases). It is evident that Lin was conducting bad-faith filing. Meanwhile, we, as the agent of PM Company, used to organize enforcement against Lin’s clothing store. During the raid, it is found that his clothes bore with a large quantity of the trademark “Gui Xi (鬼洗)” registered by PW Company and the unregistered trademark “ONIARAI”. His maliciousness of obtaining illegitimate interests is obvious.
With the above analyses, we, as the agent of PW Company, filed opposition to Trademark Office with the reason that the opposed trademark violated the No.32 Article of Trademark Law and provided considerable evidence.
Ø Result
Trademark Office supported the opposition filed by PW Company after review. The office believed that Lin’ s application of opposed trademark should be deemed as bad-faith filing of trademarks used by others and have certain public influence. If the opposed trademark was allowed to be registered, consumers will mix up the products from the two companies. Thus, Trademark Office decides to reject the registration of trademark No.13881408 “ONIARRI”.
Analyses of Relevant Regulation
The applied law for this case is the second half sentence of No.32 Article of Trademark Law. That is trademark applicant shall not conduct bad faith filing of the trademarks used by others and have certain public influence. This article mainly protects the existed trademark which is yet to be registered. The key points of it are as bellow:
1) Time: the cited trademark must have been in used and have influence to public before the application date of the bad-faith filed trademark. In this case, trademark of PW Company has been in wide usage for longtime before the application day of opposed trademark.
2) Certain influence of the trademark: there is no absolute standard on “certain influence”, not as strict as the China well-known trademark. The identification depends on each individual case. “Certain influence” usually requires to be in usage in certain range and known to public.
3) Bad-faith filing by improper means: it mainly refers to register the trademark maliciously to obtain illegitimate interests under unfair competition and damage the legitimate right and interests of others. For instance, the opposed party in the above case manufactures and sells clothes with icons same or resemble to PW Company’s trademark; and some other situation like preemptive registration on famous trademark for the purpose of obtain interests by transferring the trademark.
1) Time: the cited trademark must have been in used and have influence to public before the application date of the bad-faith filed trademark. In this case, trademark of PW Company has been in wide usage for longtime before the application day of opposed trademark.
2) Certain influence of the trademark: there is no absolute standard on “certain influence”, not as strict as the China well-known trademark. The identification depends on each individual case. “Certain influence” usually requires to be in usage in certain range and known to public.
3) Bad-faith filing by improper means: it mainly refers to register the trademark maliciously to obtain illegitimate interests under unfair competition and damage the legitimate right and interests of others. For instance, the opposed party in the above case manufactures and sells clothes with icons same or resemble to PW Company’s trademark; and some other situation like preemptive registration on famous trademark for the purpose of obtain interests by transferring the trademark.
Conclusion
For the purpose of taking advantage of the famous brands, or obtaining interests from trademark transfer, or even defeating business competitors, the profitable bad-faith filing cannot be stopped completely. If a famous trademark is preemptively registered by others, the loss is painful. In some ridiculous situation, the trademark owner even turns to be considered as the infringer. We hereby remind all trademark users whose trademarks are registered by others due to not timely registration:
1. Take immediate remedial measures when encountering other’s bad-faith filing. For instance, file opposition to the trademark which is yet to be registered; declare the invalidation to the registered trademark.
2. Preserve the evidences related to the trademark usage and promotion. In trademark dispute cases, proper and convincing evidences are the key to win.
3. Entrust a professional trademark agent. A professional trademark agent will analyze the trademark dispute comprehensively and contribute the best planning against the case. In order to improve success rate to the utmost, a professional agent will research and manage all needed evidence and materials.
4. While taking remedial measures, please do not forget to apply for your own trademark. Only owning the trademark right by yourself is the most thorough and effective solution.
For the purpose of taking advantage of the famous brands, or obtaining interests from trademark transfer, or even defeating business competitors, the profitable bad-faith filing cannot be stopped completely. If a famous trademark is preemptively registered by others, the loss is painful. In some ridiculous situation, the trademark owner even turns to be considered as the infringer. We hereby remind all trademark users whose trademarks are registered by others due to not timely registration:
1. Take immediate remedial measures when encountering other’s bad-faith filing. For instance, file opposition to the trademark which is yet to be registered; declare the invalidation to the registered trademark.
2. Preserve the evidences related to the trademark usage and promotion. In trademark dispute cases, proper and convincing evidences are the key to win.
3. Entrust a professional trademark agent. A professional trademark agent will analyze the trademark dispute comprehensively and contribute the best planning against the case. In order to improve success rate to the utmost, a professional agent will research and manage all needed evidence and materials.
4. While taking remedial measures, please do not forget to apply for your own trademark. Only owning the trademark right by yourself is the most thorough and effective solution.