Prevention of Malicious Registration of

Trademarks through Trademark

Opposition/Invalidation Declaration

Proceeding

Ma Yanyan

Trademark Review and Adjudication Board

October 2016

1

Procedures Prohibiting Malicious

Registration: Trademark Opposition and

Invalidation Declaration

• Trademark registration process

Application ExaminationPreliminary

approval and

announcement

Opposition

/Review

Registration

and

announcement

Declaration of

invalidation

Opposition1.Conditions for filing opposition

Opposition period: within three months from the date of publication for a

preliminarily approved and published trademark

(opposition against an international trademark under the Madrid International

Trademark System: file the opposition to China’s Trademark Office within

three months since the first day of the first month after publication of the

trademark in WIPO’s Madrid Gazette

Competent authority: the Trademark Office

Requirements for subjects: Absolute grounds anybody

Relative grounds prior right owner or any interested party

Opposition

Absolute grounds: also known as prohibitive clauses, which consist of marks that

may not be used as trademarks, may not be registered as trademarks and lack

distinctiveness under Article 10, Article 11 and Article 12, and trademarks

the registration of which was acquired by fraud or any other illicit means under

paragraph 1, Article 44 of the Trademark Law

Relative grounds: also known as conflicts of rights clauses, including infringement

of others’ prior rights under paragraphs 2 and 3 of Article 13, Article 15, paragraph

1 of Article 16, Article 30, Article 31 and Article 32 of the Trademark Law. The

prior rights include well-known trademarks, geographical indications, unregistered

trademarks and other legal prior rights

Opposition

2 Effectiveness and review of a decision on opposition

Decision on opposition

(Partial) rejection of registration

Approval of registration

Review

Without review

Effectiveness

Effectiveness

EffectivenessApproval of registration

(Partial)

rejection of

registration

Judicial review

Declaration of Invalidation

1. Types of Declaration of Invalidation

Declaration of Invalidation through ex officio examination by the

Trademark Office

Grounds: absolute grounds

Result: a trademark applicant that is unsatisfied with the declaration of

invalidation may file for review by the Trademark Review and Adjudication

Board; a trademark applicant that is unsatisfied with the decision of the

Trademark Review and Adjudication Board may file an administrative action

to a competent court

Declaration of Invalidation through examination of invalidation

application filed to the Trademark Review and Adjudication Board

Grounds: absolute grounds + relative grounds

Result: parties that are unsatisfied with the decision of the Trademark Review and

Adjudication Board may file an administrative action to a competent court

Declaration of Invalidation

2. Conditions for filing invalidation application

Invalidation period:

absolute grounds no time limit

relative grounds five years since registration of the trademark

（exception: in cases of bad faith registration; owner of the well-known trademark

Subjects:

Absolute grounds anybody

Relative grounds prior right owner or an interested party

Prevention of Malicious Registration of

Trademarks

1. Preemptive trademark registration between parties with a certain relationship

Article 15 of the Trademark Law

2. Preemptive registration of unregistered trademark with a certain reputation already

used by another

Article 32 of the Trademark Law

3. Large-scale trademark registration with no intention of actual use

Paragraph 1 of Article 44 of the Trademark Law

Preemptive Trademark Registration between

Parties with a Certain Relationship

Article 15 of the Trademark Law: Where an agent or a representative applies

for registration of a trademark of the principal or the represented party in the

agent's or the representative's own name without authorization, the trademark

shall not be registered and shall be prohibited from use upon opposition from the

principal or the represented party.

Where an applicant for registration of a trademark identical with or similar to an

unregistered trademark in prior use by another party on identical or similar goods

has any contractual, business or other relationship except the relationship

described in the preceding paragraph with the other party and knows the

existence of the unregistered trademark, the trademark shall not be registered

upon opposition from the other party.

Certain relationships: agency, representation, and contractual, business or

other relationship

Preemptive Trademark Registration between

Parties with a Certain Relationship

• Case

• The opposed trademark

• designated goods ： cooking pots,

kitchen utensils

• filing date： 2011-09-30

• trademark registrant (Respondent in this

case)：A Guangdong Import and Export

Company

• Opposition Applicant: Mayer & Boch Co.

Ltd. (Russia)

• Grounds: Before filing for registration of the

opposed trademark, the applicant has used

the “MAYER&BOCH MB” trademark in

China, which has gained a certain reputation.

The respondent, which is of business

relationship with the applicant, has

manifested bad faith by filing for registration

of the trademark despite its knowledge that

the trademark belongs to the applicant. It has

thereby violated paragraph 2 of article 15 of

the trademark law, and the trademark shall

not be registered

• Evidence submitted by the applicant

1. Distribution agreement between the applicant and ELECTROZED HOME APPLIANCES

INC., to the effect that the latter was an authorized distributor of the applicant’s products in

China.

2. Bank transfer statements, sales invoices, shipping documents and bills of lading from as early

as August 2008 between the distributor and multiple Chinese companies. The products in

question are frying pans and other MB products .

3. Statements and product pictures produced by the above mentioned Chinese companies

showing that the MB products referred to products with trademarks “MAYER&BOCH” or

“MAYER&BOCH MB”

4. Shipping documents, bills of lading and sales invoices between the applicant and the

respondent from as early as 18 June, 2008.

• The Respondent’s claims :

It is the producer of the MB products, and owns the trademark.

But it did not produce evidence on use of the MB trademark prior to the applicant.

• Decision:

The applicant submitted sales invoices,

shipping documents, bills of lading and other

evidence between its distributor and the

respondent from 2008, which involve MB

frying pans and other products. Therefore, it

may be determined that before filing for the

opposed trademark, the Respondent had

knowledge of the applicant’s trademark due

to their business relationship. The opposed

trademark filed by the respondent is of the

same words and design features with that of

the applicant’s trademark. It is unlikely that

such is a pure coincidence. Registration of

the opposed trademark by the Respondent is

in violation of the principle of good faith, as

well as paragraph 2 of article 15 of the

trademark law, and shall be rejected.

• Comments:

Application of article 15 is conditioned on the

existence of certain relationships, the rationale

of which is prohibition of violation of certain

obligations. The key is to prove the existence

of such a relationship and knowledge of the

other’s trademark due to such a relationship.

In addition to the certain relationship,

ownership of the unregistered trademark shall

also be proved.

Preemptive Registration of Unregistered

Trademarks having Certain Effects through

Use

Article 32 of the Trademark Law: …bad-faith registration by illicit means of a

trademark with a certain reputation already used by another party shall be

prohibited.

Preemptive Registration of Unregistered

Trademarks having Certain Effects through

Use• Case

• The disputed trademark

• designated goods：class 33 wine, etc.

• filing date： 2008-04-14

• trademark registrant (Respondent in this

case)：

A plastic packaging company in Zhongshan

Guangdong

Invalidation Applicant:

Guangdong Zhongshan Xinqida Liquor Co. Ltd.

Grounds:

Grand Listrac red wine products labeled with

the Chinese words “格兰斯察” entered into

the Chinese market in 2003. After long

term use and advertisement, the “格兰斯察

” brand has gained a certain reputation in

China. The disputed trademark was the

result of an preemptive registration of the

trademark owned by the related company of

the applicant in bad faith. . Such

registration shall be revoked.

• Identified facts and affirmation:

1. Hong Kong Grantime Import & Export Ltd. is the exclusive distributor in China of the French

Grand Listrac red wine products. Grantime Import & Export Ltd. then commissioned

Zhongshan Xinqida Liquor Co. Ltd. as the general distributor in China of the Grand Listrac

red wine products. Therefore, Zhongshan Xinqida Liquor Co. Ltd. is an interested party in the

present case.

2. “格兰斯察” is the Chinese translation of Grand Listrac, the brand name for red wine

products. This translation has been used in customs clearance paperwork, inspection,

quarantine and sanitation certificates, product advertisements and other materials. Before

filing for registration of the disputed trademark, the “Grand Listrac” and “格兰斯察” have

acquired a certain reputation among the relevant public in China.

3. The fact that the respondent is located in the same region with the applicant, and that the

disputed trademark is identical to the “格兰斯察” trademark prior used by the applicant’s

related company could lead to the presumption that the respondent had knowledge of the

applicant’s trademark and that the registration was filed in bad faith.

• Decision

The disputed trademark shall be declared invalid.

Comments:

• That bad-faith registration by illicit means of a trademark with a certain reputation

already used by another party shall be prohibited under article 32 of the trademark

law is intended to fill a lacuna in the trademark registration system. Trademarks

with a certain reputation already used by another party shall be protected in the case

of bad faith registration.

• Application of this article is hinged on the prior use of the trademark and the bad

faith on the part of the trademark registrant.

• In the present case, the invalidation application is an interested party to the

unregistered trademark.

Regulation on Large-scale Trademark

Registration with No Intention of Actual

UseParagraph 1 of Article 44 of the Trademark Law: Where a registered trademark

…registration was acquired by fraud or any other illicit means,…any other

organization or individual may petition the Trademark

Review and Adjudication Board to declare invalidation of the registered trademark.

Regulation on Large-scale Trademark

Registration with No Intention of Actual Use

• Case study

• The opposed trademark

• designated goods ： clothing, footwear,

headgear

• filing date： 2011-03-31

• trademark applicant (Respondent in this

case): An enterprise company in Shanghai

• Opposition Applicant: PPR France

• One of the grounds:

• The respondent has filed 246 trademark

registration applications, most of which

are imitations and copies of trademarks

and marks over which others own prior

rights. An investigation showed that the

respondent and other related companies

founded by its legal representative are not

engaged in any business operation, but

dedicated to trademark preemptive

registration and sale. Registration of the

opposed trademark is in bad faith and shall

be rejected.

• Decision:

• Evidence submitted in the present case suggests that the PPR trademark has been a

well-known trade name of the Applicant in the relevant sectors before filing for

registration of the opposed trademark. The Respondent engaged in preemptive

registration of the trademark on multiple classes. In addition, the Respondent has

filed for over 240 trademarks, including imitations of well-known trademarks or

trade names such as Christine Dior, Famashi and BMW. Part of the trademarks

have been rejected. The Respondent engaged in large scale registration of

trademarks that imitate or copy well-known trademarks or trade names without the

intention of actual use. Such preemptive registration would not only mislead the

public, but also disturb the trademark registration order, and be detrimental to the

market environment with fair competition. Such activities fall into registration

acquired by fraud or any other illicit means under paragraph 1, Article 44 of the

Trademark Law, and the registration shall be rejected.

Comments:

• Registration acquired by fraud or any other illicit means under paragraph 1 of

Article 44 of the Trademark Law refers to registration through fraud, or other

means that disturbs the trademark registration order, detriments public interests,

unjustifiably takes public resources or seeks illegitimate interests.

• It is recognized in both trademark review and judicial practices that activities

similar to those in the present case, which involve preemptive registration of a large

amount of trademarks or for multiple times, with no intention of actual use shall be

identified as those disturbing the trademark registration order, and therefore fall

into the scope of that article.

Special Protection for Well-known

Trademarks Basic principle: determination on ad hoc basis and passive protection

Legal basis

Paragraph 2, Article 13 of the Trademark Law: Where a trademark for registration to be used on

identical or similar goods is a copy, imitation, or translation of a well-known trademark of

another party which has not been registered in China and may easily cause confusion, it shall not

be registered and shall be prohibited from use.

Paragraph 3: Where a trademark for registration to be used on different or dissimilar goods is a

copy, imitation, or translation of a well-known trademark of another party which has been

registered in China, misleads the public, and may cause damage to the interests of the registrant

of the well-known trademark, it shall not be registered and shall be prohibited from use.

Article 14 of the Trademark Law: factors to be considered in determination of well-known

trademarks

State Administration for Industry and Commerce: 2014 Provisions on the Determination and

Protection of Well-Known Trademarks

• Case study

• The opposed trademark

• designated goods ： medicines for

human purposes, dietetic substances

adapted for medical use

• filing date：2011-02-11

• trademark registrant (Respondent in

this case)：

• A Zhejiang Biotechnology &

Pharmaceutical company

• Opposition Applicant:

Nike International Ltd. (the US)

• Grounds:

The applicant, as the owner of the “耐克

”, NIKE and trademarks, is a well-

known sports products manufacturer.

The applicant requires the identification

of the device trademark as a well-

known trademark, and that the disputed

trademark, as an imitation and copy of

it, may not be registered pursuant to

Article 13 of the Trademark Law.

Decision:

The applicant submitted record of protection as a well-known trademark, as well as

other evidence, which is sufficient to prove that the device trademark was

subject to wide use and publicity in China before filing for registration of the

disputed trademark. As a trademark familiar to the relevant public, it is of high

reputation and great influence, which shall be identified as a well-known trademark

on goods such as clothing, footwear and headgear. Same as the prior trademark, the

disputed trademark, is a device trademark, with similar overall effects. The

registration of the disputed trademark on pharmaceuticals would mislead the public

and infringe the applicant’s interests. Such registration would violate paragraph 3,

article 13 of the trademark law, and shall thereby be rejected.

Comments:

Article 13 of the Trademark Law protects well-known trademarks, which provides

for a higher protection standard. On the one hand, an unregistered well-known

trademark is entitled protection on identical and similar goods. On the other hand, a

registered well-known trademark may acquire protection on dissimilar goods,

which is not conditioned on confusion, but “misleading the public and infringing

the trademark registrant’s interests”.

In the present case, the decision did not identify that the use of the opposed

trademark on pharmaceuticals would result in confusion by the consumer, but that

such use would mislead the public and infringe the applicant’s interests. It is

considered by some as the dilution theory in China’s trademark enforcement

practice. Whatever the interpretation is, the scope of protection of a well-known

trademark shall be consistent with its reputation.

Thank you!