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Weekly China Trademark News Updates – November 10, 2021

2021-11-10

Weekly China Trademark News Updates

November 10, 2021

1. Hyatt won well-known mark recognition in court appeals

Recently, the Beijing High Court rendered a second instance judgment, affirming “Hyatt in Chinese” in respect of hotel services has constituted a well-known mark and accordingly invalidated the registration of “凯悦森HyattSen” on clothing and other goods in class 25.

Zhi-Peng Corporation applied the mark “凯悦森HyattSen” (“Disputed Mark”) in 2014 on clothing, belts, gloves, swimming suits, tops, pants, shoes, hats, hosiery, and ties. Hyatt cited its registrations of “Hyatt in Chinese” and “HYATT” in class 43 in an opposition and later an invalidation against the Disputed Mark, but received unfavorable decision on both proceedings.  The mark matured to registration in 2015 after the opposition and was sustained in the invalidation in 2018.

Disputed Mark

Hyatt brought the invalidation case to the Beijing IP Court and obtained a favorable judgment based on the well-known mark clause.

The court found that: Hyatt submitted publicity reports on many newspapers, magazines, and websites from 2000 to 2013, award rankings, hotel introductions, protected records, and other evidence which can prove that through continuous use and extensive promotion, the cited mark “Hyatt in Chinese” has gained high reputation in hotel services and is widely known by the relevant public. Therefore, the evidence in the case can prove that the cited mark “Hyatt in Chinese” has constituted a well-known trademark on hotel services. The Disputed Mark contains the cited mark “Hyatt in Chinese” in its entirety, the two marks are similar in terms of composition, pronunciation, and overall appearance. So the disputed trademark has constituted a copy and imitation of the cited mark. Although clothing and other goods designated under the Disputed Mark fall into a different class from the hotels services under the cited mark “Hyatt in Chinese,” those goods and services all belong to the field of daily consumables and the target consumers are also related in a certain extent. In the case that the Disputed Mark has constituted a copy and imitation of the cited mark, the relevant public could easily deem the registrant of the Disputed Mark is closely related to the registrant of the cited mark, thereby weakening the distinctiveness of the cited mark or improperly taking free ride of the goodwill of the cited mark. Such misleading is likely to damage Hyatt’s rights based on its well-known mark. Accordingly, the application for registration of the Disputed has violated Article 13 of the Trademark Law and.

The CNIPA disagreed and further appealed the case to the Beijing High Court. The second instance court affirmed the first instance judgment, holding that:

According to the evidence, it can be determined that before the application date of the Disputed Mark, the cited mark “Hyatt in Chinese” had been widely known by the relevant Chinese public in hotel and other services and had constituted a well-known mark. The Disputed Mark is composed of the Chinese characters “凯悦森” and the English letters “HyattSen,” of which “凯悦” is the distinctive and recognizable part for the mark; the two marks are similar in terms of composition and pronunciation. Given the fame of the cited mark and the recognition sensitivity of the public, the Disputed Mark has constituted a copy or imitation of the cited mark. Although the clothing goods under the Disputed Mark and the hotel services fall into different classes in the Similar Goods and Services Classification Table, these goods and services are closely related in terms of target consumers. As the mark “Hyatt in Chinese” has been widely known to the public, upon seeing the Disputed Mark being used on the above-mentioned goods, the public is likely to associate it to the well-known mark of Hyatt. Based on such association, the relevant public may mistakenly believe that the Disputed Mark has a certain connection with the well-known mark of Hyatt, thereby misleading the public and splitting the inherent connection between the cited mark and Hyatt’s services in hotels, which would further lead to the detrimental consequences of weakening the distinctiveness of the Hyatt’s well-known mark and harming the legitimate rights and interests of Hyatt.

2. Angel Dear secured favorable court judgments and invalidated a copycat on toys

Angel Dear, a US brand for baby clothing and blankies (comfort towels), newly received a favorable judgment from the Beijing High Court, which upheld the first instance court judgment to invalidate the trademark “ANGELDEAR” in class 28.

The disputed trademark survived an opposition and matured into registration in respect of toys, fishing tackle, exercise equipment, roller skates, chess, game consoles, etc. and was later sustained in the invalidation action.

Angel Dear further pursued the case to the Beijing IP Court, arguing based on well-known mark, prior trade name, good faith principle, agency relationship, etc. The Beijing IP Court did not support the claims based on absolute grounds and prior right in trade name, but the court upheld the argument based on Article 15 the clause for agency relationship that:

The prior use evidence submitted by Angel Dear is in relation to baby clothes and blankie, which have high relevance with toys and other goods under the disputed trademark in terms of function and use, sales channels, and consumer groups. Taking into consideration of the email correspondence between the legal representative of the disputed trademark registrant and Angel Dear regarding the brand “ANGEL DEAR,” the fact that the disputed trademark registrant registered multiple trademarks similar to “ANGELDEAR” in various classes, and that the legal representative of the disputed trademark registrant required transaction counterparties, in the business email correspondence, to annotate the goods in the invoices as toys when the goods actually sold were blankies, the Court can affirm that the goods under the disputed trademark are similar to the goods provided by Angel Deer bearing the mark “ANGELDEAR,” so the registration of disputed trademark has constituted the situation stipulated in Article 15 of the Trademark Law 2013. Accordingly, the invalidation decision should be revoked.

Both the CNIPA and the disputed trademark registrant were unsatisfied with the judgment and appealed to the Beijing High Court. The Beijing High Court supported the ruling on Article 15, stating that:

Angel Dear submitted e-mails with manufacturers and sellers, e-mails with relevant people in the company of the disputed trademark registrant, materials of e-stores on JD and Taobao, company files, etc. These materials could prove the registrant of the disputed trademark had awareness of the brand “ANGELDEAR.” The trademark registration certificates and other relevant evidence submitted by Angel Dear could prove that, prior to the application date of the disputed trademark, Angel Dear had registered trademarks in the United States on stuffed plush toys. At the same time, the prior use evidence submitted by Angel Dear covered baby clothing, comfort towels and other products, which are closely related to the toys and other goods under the disputed trademark in terms of function and use, sales channels, and consumer groups. Combined the said evidence with the factfinding in the first instance court, it can be concluded that the first instance court has not erred to determine the registration of the disputed trademark constituted the situation stipulated in Article 15 of the Trademark Law 2013.

According to the Trademark Office online database, a parallel non-use action has also been taken against this disputed trademark. Before the second instance judgment was rendered, a trademark gazette officially cancelling the disputed trademark on all designated goods except for toys had been published.

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