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10 June 2019
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.
Darlie is a toothpaste brand, famous in China for its iconic image of a man wearing a top hat and a bow tie (Figure 1). Hawley & Hazel (H&H) (BVI) Company Limited is the owner of the Darlie trademark registered in Class 3.
Guangzhou Heiren Commodity Co Ltd filed the same iconic image and DARLIE in Latin and Chinese characters in several Classes: 5 (pesticides), 9 (electric devices used for trapping and exterminating insects), 11 (refrigerator deodorisers) and 16 (toilet paper) (Figure 2).
H&H tried to oppose these applications, but failed: the designated goods were too different, and the status of a well-known trademark was, at the time of filing of the opposed trademarks (2002), too difficult to prove. The China Trademark Office, the Trademark Review and Adjudication Board (TRAB), the Beijing No 1 Intermediate Court and the Beijing High Court rejected H&H's claims.
In 2016 H&H and its Taiwan affiliate Haolai Chemical LLC collectively initiated a new round of invalidation actions, using different grounds:
The copyright claim was relatively easy to prove, provided that evidence of ownership was produced.
However, the "massive trademark squatting out of bad faith", taken as an absolute ground, was more complex. It had to be shown that Guangzhou Heiren had pre-emptively filed trademarks of other companies in multiple classes, including SK-II, Clean & Clear, Lovefun and Caile. As a consumer goods producer, Guangzhou Heiren was fully aware of these third parties' famous brands that existed in the same industry. Further, some of Guangzhou Heiren's marks were offered for sale on online trademark markets, which proved its intention of making profits from the trademark filings.
This time, the TRAB supported H&H and Haolai and the invalidation decision was confirmed in the first and second instance of the judicial proceedings.
Using the massive filing of trademarks to support a bad-faith claim is not always easy. One way to increase the chances of success is to file non-use cancellation actions against some of the vulnerable trademarks owned by the squatter. In most cases, the bad-faith trademark owners do not use their trademarks or use them only symbolically. Anybody can file such a claim and the obligation of submitting use evidence to maintain the registration lies entirely on the registrant's shoulders. Although cancellations for non-use do not have a direct impact on the disputed trademark, they can serve as circumstantial evidence to show the squatter's overall malice.
For further information on this topic please contact Yongjian Lei at Wanhuida Peksung by telephone (+86 10 6892 1000) or email (email@example.com). The Wanhuida Peksung website can be accessed at www.wanhuida.com and www.peksung.com.
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