On May 20, 2021, the Supreme People’s Court (“SPC”) rendered a final decision in favor of Tommy Bahama (“TB”) for the “TOMMY BAHAMA” trademark opposition cases in Classes 9, 14, and 18. In its decisions, the SPC revoked the lower courts’ and the CNIPA’s decision. The SPC’s final decision marvelously closed TB’s decade-long battle against the other party, who sought return of its own trademarks. We were thrilled to assist TB from the second instance court appeal to winning the retrial before the SPC.

The issue presented in this case was whether the opposed marks constituted as the circumstances of “obtaining registrations by other unfair means” as described in Article 41(1) of the Chinese Trademark Law 2001. The hurdle lied in the interwoven relationships and between various parties involved, their actions, and protecting interests of a particular entity and public orders.

The SPC found that the other party and other closely related third parties did not have justifiable explanations for applying trademarks identical or highly similar to “TOMMY BAHAMA,” TB’s business signs and designs. Meanwhile, the other party used “TOMMY BAHAMA” to register corporate names and domain names and cause confusion among the relevant public to believe that the other party is the owner of the “TOMMY BAHAMA” trademarks through promotions on websites. What’s more, the related third parties and their legal representatives was a trademark agent who should have known the relevant trademark regulations and laws, abide by the good faith principle in conducting businesses, and respect others’ rights. However, the other party and the related third parties obviously violated the principle of good faith and applied multiple “TOMMY BAHAMA” trademarks, used it as corporate name and domain name for business purposes with the intent to obtain unjustified interests. Such actions amounted to subjective bad faith. The other party and the related third parties also applied other entities’ rightful trademarks, disturbed the trademark registration order. The SPC concluded that consider the actions taken by the other party and the related third parties surrounding the “TOMMY BAHAMA” trademark and other entities’ trademarks without justified reasons, the opposed marks constituted as the circumstances of “obtaining registrations by other unfair means” as described in Article 41(1) of the Chinese Trademark Law 2001.

Beijing East IP’s Yan Zhang, Yanfang Fu, and Di Yuan were involved at the second instance trial phase before the Beijing High Court. Upon further investigating and studying the case, we were certain that the key in overturning the lower court’s decision lied in the said application of “obtaining registrations by other unfair means.” We began collecting evidence regarding the bad faith among the other party, related third parties, and the mastermind behind. During evidence collection, we found the relationships between the other party, the other party’s shareholders and trademark agent, the opposed marks’ applicant and assignee were particularly intertwined, namely, although these parties were related, they could not be simply connected through shareholders (one of the common strategies we use when a case involves more than one party). It was critical for us to connect the dots between the said parties’ network because simply relying on the other party’s trademark filings was insufficient to hold it for “obtaining registrations by other unfair means.” To conquer such challenge, our attorneys investigated and dissected available information to find the collusion between the involved parties in copying “TOMMY BAHAMA.” Based on the evidence found, we persuaded the judges that not only the other party’s actions should be considered, but the third parties’ actions should also be considered. These actions include trademarks applied, use of the trademarks, similarity and relatedness between the applied trademarks and other famous corporate names or logos, and trademark assignments. We argued that these actions could prove that the other party and the related third parties had subjective bad faith. The SPC supported our allegations and held that the actions of the other party and the related third parties disturbed the trademark registration orders and constituted as “obtaining registrations by other unfair means.”

Remarks: this case was brought to trial by the SPC in 2018 and according to the SPC’s 2018 annual intellectual property report, in the 1,243 retrial cases, 976 cases were rejected, 190 were brought to trial by the SPC. That is, only 15.3% of the retail petitions would be actually tried by the SPC. Further, in 2020, there were only 305 retrial cases and even fewer cases were overruled.