Top 10 Trademark Agencies in Administrative Litigation 

On January 8, 2021, Zhichanli Network Technology Co., Ltd., China’s top intellectual property media platform, published the Top 10 China Intellectual Property Agencies Rankings. Beijing East IP was ranked in the Top 10 Trademark Agencies in Administrative Litigation for the following two cases. 

Case 1 – Lonely Planet is not so lonely

In February 2018, the well-known travel guides publisher Lonely Planet filed several invalidation actions against the marks “Gu Du Xing Qiu in Chinese (孤独星球)” and “Lonely Planet and Gu Du Xing Xing in Chinese (孤独行星)” in Classes 35, 41, and 42 filed by Guangxi Periodical Media Group Co., Ltd. (GPMG). The China National Intellectual Property Administration (“CNIPA”) upheld the Disputed Mark’s validity, however, through Beijing East IP’s representation, the Beijing Intellectual Property (“IP”) Court and the Beijing High Court overruled the CNIPA’s decisions and ruled in favor of Lonely Planet.

Lonely Planet’s Marks

Disputed Marks

In its decision for Class 41, the Beijing IP Court first examined whether the Disputed Marks violated Article 30 of the Trademark Law of China that allows the CNIPA to reject a trademark application identical with or similar to others’ prior trademark in respect of identical or similar goods. The Beijing IP Court concluded that the Disputed Marks were remarkably similar to Lonely Planet’s Marks. Although the Disputed Mark has approved services in Class 41 for “publication of books; publication of electronic books and journals on-line; providing on-line electronic publications (not downloadable),” the court found these services were closely related to the goods “books; printed publications; magazines [periodicals]” approved for Lonely Planet’s prior marks in Class 16.

The Beijing IP Court then examined whether the Disputed Mark violated Article 32 of the Trademark Law of China that states a trademark application shall not create any prejudice to the prior right of others, nor use unfair means to preemptively register the trademark of some reputation others have used. The court reasoned that Lonely Planet’s evidence proved that Lonely Planet enjoyed prior trade name right in travel guide related book and publishing services. The “Lonely Planet” trademark also constituted as an unregistered prior used mark that has obtained certain influence in the book and publishing services. Moreover, GPMG and Lonely Planet were both publishing companies, GPMG knew or should have known Lonely Planet’s trade name and prior used “Lonely Planet” trademarks. GPMG’s applications for the Disputed Marks can hardly be seen as good faith filings. The Disputed Mark shall be invalidated under Article 32 of the Trademark Law of China for infringing Lonely Planet’s prior trade name right and registering Lonely Planet’s prior used trademark that has obtain certain influence with unfair means.

On appeal, the Beijing High Court affirmed the Beijing IP Court’s above rulings. Additionally, the Beijing High Court found that the Disputed Mark’s approved services highly overlapped with television programing production services that Lonely Planet previously used with the “Lonely Planet” trademark. Likewise, the Beijing High Court found that Lonely Planet’s trade name has obtained certain fame before the Disputed Mark’s application date on television programing product services.

Takeaway:

1. Where a prior used mark’s owner who claimed that another trademark applicant preemptively filed a trademark application for its prior used mark that has obtained certain influence, if the prior used mark can be proven to have obtained certain influence and that other trademark applicant knew or should have known about the prior used mark, it can be presumed that the trademark application was filed preemptively using unfair means. The court may recognize a prior used mark has obtained certain influence if the prior used mark’s owner proves that its prior used mark has been continuously used for a time period, within a region, has sales volume, or advertisements and promotions.

2. Analyzing services actually offered, including the specific content, purpose, delivery method, time of use, and relevant public who may use the services are important when persuading the judge on the similarity of services between the two marks. Similarly, categorizing services into several subgroups to emphasize the similarity of the goods and services from different angles as well as the actual use of a trade name and a trademark can help to increase the chance of success.

3. When proving fame and prior use of the involved trademark or trade name, evidence of third-party resources can be key. For example, when trying to prove prior use and fame in TV program producing, authoritative or state-owned media report and TV programs on video websites prior to the disputed mark’s application date are good evidence to prove the fame and prior use of the involved trademark or trade name.

Case 2 – E-VO-LON or Yi Wo Long?

In April 2015, Beijing East IP represented Freudenberg to file invalidation actions against two “Yi Wo Long in Chinese (依沃珑)” trademarks (“Disputed Marks”) owned by Nanjing Pippin Textile Technology Co., Ltd. (“Pippin”) before the Trademark Review and Adjudication Board (“TRAB”) and harvested favorable outcome for Freudenberg. Pippin, on the other end, was unsatisfied with the decisions and appealed to the Beijing Intellectual Property Court, which ruled in favor of Freudenberg as well. Pippin further appealed to the Beijing High Court and later filed petitions to the Supreme People’s Court (“SPC”), but all judgments were in favor of Freudenberg.

	EVOLON
Disputed Marks	Freudenberg‘s Mark

The SPC reasoned that the Disputed Marks’ pronunciation was similar to the Cited Mark and Freudenberg submitted sufficient evidence during the proceedings before the TRAB and the lower courts to prove that “Yi Wo Long in Chinese” and “EVOLON” have established one-to-one corresponding association through Freudenberg’s promotion and use. The goods, although fell into different subclasses, were identical or similar in terms of function and use, manufacturing department, sales channel, and target consumers, thus constituted similar. The SPC also reasoned that Freudenberg’s evidence proved that the Cited Mark had obtained relatively high fame prior to the Disputed Marks’ application dates. The co-existence of the Disputed Marks and the Cited Mark was likely to cause confusion among the relevant public. Accordingly, the lower courts correctly held that the Disputed Marks and the Cited Mark were similar marks.

Takeaway:

1. Generally, similarity between word marks can be determined based on the composition, overall appearance, pronunciation, meaning, etc. But if two marks are in different languages, the constituent elements and the visual impression are readily distinct. Hence, similarities shall be found from the meaning and the pronunciation. For example, if the two marks involves are coined words, that is, words without defined meaning for the consumers to comprehend the goods or services offered, pronunciation of the two marks, use and fame, and one-to-one correspondence between the two marks can be used to argue similarities between the two marks. Third-party evidence found on the internet, journal articles, online media coverages, promotional materials from the relevant public, or the interested parties can be used to support the similarity claim.

2. Goods similarity can be easily found when goods fall into the same subclass according to the Classification of Similar Goods and Services issued by the CNIPA based on the Nice Agreement (“CNIPA Classification”), but when goods fall into different subclasses or different subgroups, the inherent interrelation between goods in terms of function and use, manufacturing department, sales channel, and target consumers can be convincing similarity arguments. Additionally, when trying to prove the relationship between raw materials and the final products, evidence collected from academic views, public cognition, and actual product pictures can be supportive.

In addition to goods similarity, awareness of the rightsholder’s fame and reputation, the other party’s bad faith and activities that may confuse the relevant public are convincing evidence to persuade the court that although two marks are in different languages, they may still be considered similar.

Email: trademark@beijingeastip.com Tel: +86 10 8518 9318 | Fax: +86 10 8518 9338 Address: Suite 1601, Tower E2, Oriental Plaza, 1 East Chang An Ave., Dongcheng Dist., Beijing, 100738, P.R. China