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On June 24, 2020, Beijing High Court, as the second instance court, rendered the final and effective judgments on five trademark invalidations against “GU DU XING QIU in Chinese” and “LONELY PLANET and GU DU XING XING in Chinese.” Ms. Yan ZHANG, Ms. Tianmei DENG and Mr. Liang YIN at Beijing East IP Law Firm represented Lonely Planet and won the victory in both the first instance and the second instance.
Lonely Planet filed invalidations against the trademarks “GU DU XING QIU in Chinese” and “LONELY PLANET and GU DU XING XING in Chinese” in Classes 35, 41 and 42 (hereinafter referred to as “Disputed Marks”) filed by a Chinese company. Beijing IP Court rendered the judgements on December 20, 2019, partially affirming the claims of Lonely Planet, which revoked the CNIPA decisions sustaining the registration of the Disputed Marks. Both Lonely Planet and the CNIPA appealed, and Beijing High Court rendered the second instance judgements, upholding all claims of Lonely Planet.
Beijing IP Court broke through the CNIPA Classification of Goods and Services, and ruled that the Disputed Marks and Lonely Planet’s prior marks constitute similar marks in respect of similar goods and services. Specifically speaking, Beijing IP Court affirmed the similarity between “publication of books; publication of electronic books and journals on-line; providing on-line electronic publications, not downloadable” under the Disputed Marks in Class 41 and “books; printed publications; magazines [periodicals]” under Lonely Planet’s prior marks in Class 16, the similarity between “game services provided on-line from a computer network” under the Disputed Marks in Class 41 and “computer game software; computer software, recorded” under Lonely Planet’s prior marks in Class 9, and the similarity between “computer programming; maintenance of computer software; duplication of computer programs; conversion of data or documents from physical to electronic media; creating and maintaining web sites for others; data conversion of computer programs and data [not physical conversion]; computer software consultancy; providing search engines for the internet; digitization of documents [scanning]; monitoring of computer systems by remote access” under the Disputed Marks in Class 42 and “computer software; computer software, recorded” under Lonely Planet’s prior marks in Class 9.
Beijing IP Court further holds, the LONELY PLANET mark owned by Lonely Planet has been used on the services of publication of books, and enjoyed certain reputation before the application date of the Disputed Marks, so does its LONELY PLANET trade name. The services “publication of publicity texts; radio advertising; television advertising; on-line advertising on a computer network; news clipping services” in Class 35, “publication of books; publication of electronic books and journals on-line; providing on-line electronic publications, not downloadable” in Class 41 under the Disputed Marks are closely related with the books and publication services offered by Lonely Planet. Moreover, as the registrant is engaged in the same field with Lonely Planet, it should have known the LONELY PLANET mark which has been prior used by Lonely Planet, thus there are justified reasons to apply for the Disputed Marks. The registration of the Disputed Marks on the aforesaid services in Classes 35 and 41 have damaged the prior trade name of Lonely Planet, and constituted the pre-emptive registration of Lonely Planet’s trademark that has been in use and has certain influence.
Beijing High Court sustained the above rulings of the Beijing IP Court, and further upheld Lonely Planet’s grounds in the appeal. For the Disputed Marks in Class 41, the first instance court decisions only recognized the prior use and fame of Lonely Planet’s marks and trade name on publication of books. The second instance court decisions ascertained the prior use and fame of Lonely Planet’s marks and trade name on services of production of TV programmes, and thereby ruled that the Disputed Marks shall also be invalidated on the services “film production, other than advertising films; production of radio and television programmes; television entertainment; news reporter services; production of music.”
In these cases, our attorneys classified the goods and services under the Disputed Marks into several subgroups, and emphasized the grounds with higher possibility of success for each subgroup based on the comprehensive consideration of the similarity of the goods and services as well as the actual use of Lonely Planet’s trade name and marks. For instance, for “publication of books; publication of electronic books and journals on-line; providing on-line electronic publications, not downloadable” under the Disputed Marks in Class 41, we argued both Article 30 and Article 32 of the Chinese Trademark Law; for “film production, other than advertising films; production of radio and television programmes; television entertainment; news reporters services; production of music,” we emphasized Article 32 of the Chinese Trademark Law; while for “game services provided on-line from a computer network,” we focused on Article 30 of the Chinese Trademark Law.
In addition, our attorneys summarized and analyzed the services actually offered by Lonely Planet, including the specific content and purpose, delivery method, time of use, and relevant public of the services. As the first instance court only upheld the use and fame of Lonely Planet’s trade name and trademarks in publication, in the second instance appeal, our attorneys thoroughly reviewed the submitted evidence and did comprehensive analysis, further dug out and collected evidence based on the clues shown in the contacts provided by Lonely Planet. By combining the authoritative media report, and the TV programmes available on relevant video websites, a complete evidence chain is formed to prove the use and fame of Lonely Planet’s trademarks and trade names in the field of production of TV programmes, which is thereby supported by the second instance court.