No one wants to associate toothpaste with insect repellent, but this can happen if the same names and images have been trademarked in different classes of goods. This was the situation in which Hawley & Hazel (H&H) found itself with regard to its toothpaste brand Darlie. After Guangzhou Heiren filed the same iconic image associated with Darlie and the trademark DARLIE in several classes, H&H initiated copyright infringement and bad-faith registration claims.
Data released by the Beijing Intellectual Property Court shows that bad-faith filings and registrations account for 30% of all trademark-related administrative suits, making them a major concern for brand owners. Recent case law of the China Trademark Office, the Trademark Review and Adjudication Board and the judiciary reveals how brand owners could be more strategic in fighting bad-faith filing under the existing trademark legislative framework.
The question of how stylised word marks should be examined often arises. In a recent case, an applicant obtained a registration for a word mark comprising three stylised Chinese characters, even though the visual arrangement of the characters rendered it a device mark and not a word mark. One solution to this issue that has been proposed would be to treat such marks as composite trademarks, comprising both a word and a device mark, and thus subject them to substantial examination as both.
In a trademark battle involving Swiss fashion company AKRIS Prêt-à-Porter AG, Akris had to change its litigation strategy in the second-instance proceedings by shifting the focus from its prior registration, which had ceased to exist, to the bad faith of the owner of the opposed trademark. The case, which took 12 years to resolve, was recently selected as one of the Beijing IP Court's 18 exemplary cases concerning bad-faith trademark filing.
In upholding a recent opposition action against a mark that was filed in bad faith, the China Trademark Office (CTMO) cited, among other things, an administrative decision issued by a local administration for industry and commerce and the bona fide doctrine. The CTMO's citation of the latter is unusual, as while the doctrine is customarily perceived to be a general principle, its direct citation remains controversial.
Since 2008, the development of intellectual property has become a national priority in China. The volume of trademark applications has consistently grown over the past 15 years and reached 3.69 million in 2016. One of the consequences of this growth is the proliferation of so-called 'pre-emptive trademark applications', filed in bad faith. The Chinese government is becoming increasingly aware of this problem.
In 2016 the State Administration for Industry and Commerce published its Opinion on Pushing Forward the Reform to Facilitate Trademark Registration Procedure, making such reform its priority for 2016 and 2017. The opinion is intended to broaden the scope of external trademark examinations and addresses outsourcing, the application procedure, registration certificates, the online and sole-examiner systems, information availability and classification.
China's quality watchdog, the General Administration of Quality Supervision, Inspection and Quarantine, has promulgated its long-awaited Measures on the Protection of Foreign Geographical Indications Products. The new measures stipulate rules for the application, examination, approval, supervision and opposition of registrations, and were inspired by the precedent opinions on domestic geographical indication registrations.
The China Trademark Office (CTMO) has upheld an opposition against a trademark application filed by a company affiliated with the distributor of the opponent, citing Article 15.2 of the new Trademark Law. The CTMO applied the new law even though the opposition referred to the former version of Article 15. By doing so, it indirectly clarified an apparent contradiction in terms used.
The Beijing Number 1 Intermediate People's Court has recognised that the geographical indications 'Champagne' and '香槟' ('Champagne' in Chinese) should be protected, even though they were not registered in China at the time that the case was filed. The judgment will constitute an important reference in future cases where a geographical indication owner has not yet registered IP rights in China.
The Trademark Review and Adjudication Board has found that scupper hoses in Class 17 are similar to shower pipes in Class 11 with respect to their usage, function, target consumers and sales channels. The case concerned a registration for the mark MOEN for scupper hoses, which was opposed by Moen Incorporated on the grounds of its prior marks designating showers, bath basins, sinks, taps and drainpipes for bath basins.
Recent invalidation proceedings before the Supreme Court have shown that evidence submitted at the retrial stage can be taken into consideration. The case, which involved Lacoste's crocodile device trademark, should encourage brand owners to file decisive new evidence at any stage of the judicial review procedure.
When examining opposition proceedings, the China Trademark Office (CTMO) generally considers only the opposed trademark and the cited trademark. However, two recent cases show that the CTMO may take other trademark applications filed by the applicant into consideration when assessing the situation and deciding on the opposition.