Weekly China Trademark News Updates

December 6, 2023

1. The “KKW” mark was invalidated based on bad faith

The Beijing Intellectual Property Court rejected the plaintiff Yuanqing Yan’s appeal petition in a trademark invalidation case against the CNIPA and the third-party KIMSAPRINCESS INC. (“KIMSAPRINCESS”).

The Disputed  Mark was “KKW” with reg. no. 26910248 in Class 35 for “advertising; organizing commercial or advertising exhibitions; accounting; retail or wholesale services of pharmaceutical products; displaying goods in communication media for retail purposes; personnel management consulting; marketing on behalf of others; optimizing search engines for marketing purposes; and marketing on behalf of others; optimizing search engines for marketing; providing online marketplaces for buyers and sellers of goods and services; computer entry services.”

The issue was whether the Disputed Mark’s registration violated the deceptive or unfair means registration clause under Article 44(1) of the 2013 Trademark Law. The court found that “KKW” is a registered trademark under KIMSAPRINCESS, which was founded by the famous celebrity Kim Kardashian. The evidence submitted by KIMSAPRINCESS proved that “KKW” brand cosmetics, perfume and other goods have had a certain influence in the China market. Yuanqing Yan has applied for registration of more than one hundred trademarks in various classes, including more than 20 “KKW” series trademarks which were identical or similar to KIMSAPRINCESS’s trademarks, such as “KKW” “KKWBEAUTY” “KKW Kai Kai Wei in Chinese” “KKW Ka Ka Wei in Chinese” “KKW Ka Ka Wa in Chinese” “KKWQIC” and “KKWYANQINA”. These filings can hardly be explained as accidental or purely coincidental. Moreover, some of Yuanqing Yan’s trademarks have been invalidated by the CNIPA as constituting “obtaining registration by other improper means”. Yuanqing Yan’s filing of the said marks had obvious subjective bad faith intent of copying and imitating other people’s trademarks, and also exceeded the needs of normal production and operation, disrupted the normal administrative order of trademark registration, and damaged the market environment of fair competition, and was not legitimate, and constituted “obtaining registration by deceptive means or other improper means” under Article 44(1) of the 2013 Trademark Law.

2. “He Ni Ken in Chinese” constituted similar to “HEINEKEN” and was invalidated

In a trademark invalidation dispute between the Plaintiff HEINEKEN BROUWERIJEN B.V. (“Heineken”), the Defendant CNIPA, and the third-party Wenliang Pan, the Beijing Intellectual Property Court has revoked the CNIPA’s decision and ordered the CNIPA to deliver a new decision.

Disputed Mark	Cited Mark 1	Cited Mark 2
Reg. No. 38696030 Class 32	Reg. No. G678138 Class 32	Reg. No. 3289981 Class 32

The two issues in this case were: first, whether the Disputed Mark and the Cited Mark constituted similar trademarks used on identical or similar goods as stipulated under Article 30 of the Trademark Law; and second, whether the Disputed Mark violated the obtaining registration by deception or other improper means clause under Article 44(1) of the Trademark Law.

Regarding issue one, the court found that since the Cited Mark 3 (“Heineken & Design”) was not timely renewed, it no longer constituted an obstacle to the prior right of the Disputed Mark. The Disputed Mark’s approved goods and the goods approved under the Cited Mark 1 and 2 completely overlapped and constituted identical or similar goods. The Disputed Mark consisted of the Chinese character “He Ni Ken in Chinese” and the Cited Mark 1 and 2 were both composed of the English letters “HEINEKEN”. Although the Disputed Mark and the Cited Marks are not identical in appearance and composition, “He Ni Ken in Chinese” and “HEINEKEN” were not inherent vocabulary and were both fabricated words. According to the evidence submitted by Heineken for the translation of “HEINEKEN”, “He Ni Ken in Chinese” is the phonetic translation of the English word “HEINEKEN”. Considering the evidence in the case can prove that the Cited Marks has obtained certain fame before the Disputed Mark’s registration date on beer related goods, the third party and the plaintiff were business operators in the same industry, and the third party had engaged in “HEINEKEN” brand beer parallel import business, its application for registration of the Disputed Mark was not a coincidence. Therefore, the co-existence of the Disputed Mark and the Cited Marks in the market would easily cause confusion and misidentification to the relevant consumers. The Disputed Mark and the Cited Marks constituted as identical marks that were used on identical or similar goods.

Regarding issue two, since the Disputed Mark has been declared invalid under Article 30, and arguments based on Article 44(1) were no longer applicable.

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