This is an invalidation case, wherein the China National Intellectual Property Administration (CNIPA) made a breakthrough by recognizing the similarity of goods in Class 29 designated by Disputed Mark and goods such like “ice cream jelly; chow-chow [condiment], etc.” in Class 30 covered by the Complainant’s cited prior marks. When determining similarity of designated goods, the CNIPA took a comprehensive consideration of various factors, including the reputation of the Complainant’s prior trademarks, the bad faith of the Respondent, and the likelihood of confusion in actual use and characteristics of products.  

In view that the Complainant has no prior trademark rights in Class 29, we carefully analyzed the case after receipt of the client’s authorization. In the invalidation grounds, we emphatically analyzed the high relevance of the designated goods of two parties’ marks and the Respondent’s bad faith, and eventually persuaded the CNIPA to issue the favorable invalidation decision.

I. Background

The Respondent, Ji'nan RuiJu Trading Co. Ltd. is obviously a copycat, who mainly engaged in trademark imitation. It especially squatted ADQ’s prior trademarks “DAIRY QUEEN in Chinese” and “DAIRY QUEEN” in Class 29. With the developments of the client’s business, it expanded business to provide the products especially like “sausages, etc.” designated in Class 29. The pirated trademark filed by the Respondent poses serious obstacle to ADQ’s application for “DAIRY QUEEN in Chinese” mark on its core goods in Class 29. Therefore, we filed the invalidation against the Disputed Mark to show ADQ’s attitude in fighting against the malicious copycats, and also to make the way for ADQ’s application in Class 29. 

II. Difficulties

i.    Without prior trademark rights in Class 29, how to demonstrate similarity of the goods in Classes 29 and 30;   
ii.    Without prior rights on “DAIRY QUEEN in Chinese” and “DAIRY QUEEN” trademarks, how to demonstrate similarity of the “DAIRY QUEEN in Chinese & SNOW QUEEN” and the client’s prior English version trademark “DAIRY QUEEN” in particular;  
iii.    How to collect the evidence to prove the bad faith of the Respondent, under the situation wherein the Respondent is very foxy.   

III. Strategies

In connection with the disputes and the difficulties in this case, we made the following strategies:  

i.    Fully demonstrate the relevance and similarity between the goods in Class 29 and 30, by collecting and providing evidence such as the evidence showing the simultaneous sales of the two parties’ goods in many fast food restaurant, and the precedent decisions/judgments wherein the Chinese authorities made similar breakthrough in deciding similarity of goods.  

ii.    Fully utilize the evidence on hand, especially the evidence proving the combined use of the Complainant’s Chinese and English marks and demonstrate that the Chinese mark 冰雪皇后 (DAIRY QUEEN in Chinese) and English mark DAIRY QUEEN have formed the stable corresponding relationship and obtained high reputation. We especially claimed that the Disputed Mark is not only similar to the Chinese version mark, but also similar to the English version mark. 

iii.    Obtain and secure the evidence to prove the Respondent’s bad faith via online search and telephone inquiry, and notarize the voice recording to preserve the evidence. 

IV. Significance

i.    This decision recognized that predating the application date of the Disputed Mark, the Complainant’s Chinese mark冰雪皇后(DAIRY QUEEN in Chinese) and English mark DAIRY QUEEN series of marks had formed stable relationship and obtained high reputation. Therefore, it recognized that the Disputed Mark 冰雪皇后 Snow QUEEN (DAIRY QUEEN in Chinese & SNOW QUEEN) is respectively similar to ADQ’s Chinese version mark and its corresponding English equivalence DAIRY QUEEN. This is of great reference significance for foreign applicants to cope with the preemptive applications of its Chinese mark or English mark, i.e. collecting and providing the evidence of combined use of the Chinese marks and English marks to prove the stable relationship of two marks.

ii.    When recognizing the similarity of goods, the CNIPA comprehensively considered the Respondent’s bad faith of confusing the public and certain fame of the ADQ’s prior marks and made the great breakthrough accordingly. The CNIPA held that the goods designated in Class 29 and 30 are common foods and are closely related to each other. In this instance, the co-existence of two parties’ marks in the market would mislead the relevant public that the two parties have certain relationship and cause misrecognition about the sources of goods, which has constituted similar marks in respect of similar goods. This provides a new thinking for the preparation of conflict cases in the future, i.e., combining the bad faith and the possibility of actual confusion when demonstrating similarity of goods and services.

iii.    In this case, we fixed the bad faith of the Respondent through the notarization of telephone communication records and enhanced the credibility and persuasiveness of the evidence. Referring to this case, when we collect evidence of bad faith in future conflict cases, we should pay attention to skillfully using notarial means to improve the probative force of evidence.