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Weekly China Trademark News Updates
January 11, 2022
1. New trademark related regulations effective from January 2022
The new Trademark Examination and Adjudication Guidelines issued by the CNIPA came into force on January 1, 2022, and the original Trademark Examination and Adjudication Standards was abandoned at the same time.
The revised trademark related forms issued by the CNIPA came into force on January 1, 2022, and the outdated forms was discontinued at the same time.
The Standard for Judgment of General Trademark Illegalities issued by the CNIPA came into force on January 1, 2022.
From January 1, 2022, the CNIPA will no longer issue paper trademark registration certificates. Trademark registration certificate generate through published trademark gazette, other trademark applications, and other applications filed in paper format will received Notification of Retrieving Trademark Registration Certificate (“Notification”). Registrant can retrieve electronic trademark certificate by log onto the CNIPA’s website using the web address and retrieving code provided on the Notification. Trademark applications filed electronically should log onto the CNIPA’s website to retrieve view, download, and print the electronic certificate.
2. Ferrari invalidated the “Horse and Serpent Design” trademark
Recently, the Beijing High Court rendered an administrative second instance dispute over the request for invalidation of trademark rights between the Qingdao Fulin Tire Co., Ltd. (“Qingdao Fulin”), the CNIPA, and Ferrari. The court rejected Qingdao Fulin’s appeal and upheld the lower court’s decision.
|Disputed Mark||Cited Mark 3||Cited Mark 4|
TM App. No. 20312692
TM Reg. No. 4854897
TM Reg. No. G1085878
The main issue of this case was whether the Disputed Mark and the Cited Marks 3 and 4 constituted similar trademarks on the same or similar goods. Regarding the similarity of goods, Qingdao Fulin clearly recognized in the first instance lawsuit that the approved goods for the Disputed Mark and the approved goods for the Cited Marks 3 and 4 constituted the same or similar goods, and the Beijing High Court confirmed this fact after review. Regarding the similarity of trademarks, the Beijing High Court reasoned that the distinctive identification part of the Disputed Mark and the distinctive identification figures of the Cited Mark 3 and 4 were obviously horses, and all showed a posture of prancing to the left, and the overall visual effects were similar. Moreover, the evidence in the case can prove that the prancing horse design used by Ferrari on automobiles and related products had a certain reputation. When the Disputed Trademark and the Cited Trademarks were used simultaneously on the same or similar goods that have been approved, it was easy to cause confusion and misunderstanding to the relevant public, and cause them to mistakenly believe that it was a series of trademarks provided by the same supplier of goods, or that there was a certain relationship, an association, or other specific relationship between the suppliers. The evidence in the case was not enough to prove that the Disputed Mark had a certain popularity after use, so that the relevant public can distinguish the Disputed Mark from the Cited Marks, which will not lead to the possibility of confusion and misidentification. At the same time, in order to determine whether the Disputed Mark constituted as the situation stipulated in Article 30 of the Chinese Trademark Law 2014, only the possibility of confusion and misidentification was required, and the actual occurrence of confusion and misidentification was not a requirement. Accordingly, it was correct for the first instance judgment to rule that the Disputed Mark and the Cited Marks constituted as similar trademarks used on the same or similar goods.
3. Obtaining and exercising trademark rights in violation of the principle of good faith constitutes abuse of rights and shall not be protected
The Zhejiang High Court rejected the retrial petition field by the retrial petitioner Jinxu Geng against the respondent Yiwu Dongge Trading Co., Ltd. (“Dongge”), Weifeng Li, and Hangzhou Alibaba Advertising Co., Ltd. (“Alibaba”) in a trademark infringement dispute.
The main issue of this case is whether it is correct that the first and second instance courts did not protect Jinxu Geng’s trademark rights involved in the case. The Zhejiang High Court found that the Article 7(1) of the Chinese Trademark Law stipulated that the application for registration and use of a trademark shall follow the principle of good faith. In trademark infringement cases, the principle of good faith should also be considered. Any act that violated the legislative intent and purpose of the Chinese Trademark Law, damaged the legitimate rights and interests of others, and maliciously obtained and exercised trademark rights shall be deemed as abuse of rights, and relevant infringement claims should not be supported by the Chinese Trademark Law. In this case, first of all, according to the evidence submitted by Dongge and Weifeng Li in the first instance, the outsider CGE Company launched the “CODENAMES” board game in 2015 and gained a certain popularity. This board game was marked with “CODENAMES” on the front of the product packaging. Jinxu Geng registered the trademark “CODENAMES” with registration number 25812260 (the “Disputed Mark”) that was identical with the name of CGE’s board game. The application date of the Disputed Mark was later than the initial public sale time of the “CODENAMES” board game, and the board game had been sold in the China market. Domestic consumers can purchase or learn about the board game through the Internet and other means. Jinxu Geng may had exposure to the “CODENAMES” logo, and he could not provide evidence or explain the exact source of the Disputed Mark’s logo. At the same time, Jinxu Geng had marked the CGE logo on the products he sold, which he could not provide reasonable explanation. The purpose of registering and using the trademark “CODENAMES” involved in the case can hardly be regarded as legitimate. Second, Jinxu Geng registered a large number of foreign board games related logos as trademarks, and then filed a large number of infringement lawsuits. Jinxu Geng’s way of obtaining and exercising trademark rights violated the principle of good faith and constituted abuse of rights. According to the ruling on the invalidations of the Disputed Mark submitted by Dongge and Weifeng Li, the CNIPA also ruled that the application for registration of the Disputed Mark constituted as the situation of “obtaining registration by other improper means,” which violated the Article 44(1) of the Chinese Trademark Law, and the Disputed Mark shall be declared invalid. Finally, although Jinxu Geng submitted evidence of his actual use of the trademark in question, on the premise that the trademark in question was not acquired and exercised in good faith, even if Jinxu Geng actually used the Disputed Mark, it would be difficult to make up for the legality of his behavior. Considering the above circumstances, it was not incorrect for the first and second instance court to not protect Jinxu Geng’s trademark right in this case. Accordingly, Jinxu Geng’s retrial petition did not meet the circumstances stipulated in Article 200(6) of the Civil Procedure Law of China, and shall not be supported.
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