Background

Our client found that the Disputed Marks owned by the Respondent were confusingly similar to its prior used trademark, which were malicious imitations and infringement on its prior rights. In order to protect our client's interests, we filed non-use cancellation petitions and applications for declaration of invalidity with the CNIPA.

Difficulties

Although the two Disputed Marks were identical to the client's earlier marks in terms of distinctive parts, the client did not have prior registrations for its core goods, and do not have very sufficient evidence to prove its prior use of the mark in China. In addition, from preliminarily investigation, we did not find obvious evidence showing the bad faith of the Respondent. In view of the evidence basis is not strong for us, and we did not find use information of the Disputed Mark by the Respondent, in considering the cost effective and the chances of successes, we first chose to file non-use cancellation petitions against the Disputed Marks. Unfortunately, after the review of non-use cancellation procedures, the registrations of the Disputed Marks were still maintained on the client's core goods. The Respondent submitted a series of evidence to prove their use of the Disputed Mark and it looks like that the Disputed Mark was in actual use. Yet, through our meticulous sorting and comparison of the evidence of use submitted by the Respondent, we found that there were traces of forgery and falsification in many pieces of evidence of use. Although we submitted detailed rebuttal opinions, the CNIPA determined that the evidence submitted by the Respondent was valid and upheld the registrations of the Disputed Marks on the client's core goods. If we further appeal the review decision, it would cost much for the client. Moreover, in this time, the Disputed Mark would have been registered over 5 years, if we do not file the declarations of invalidity in time, for lacking of evidence to prove the prior well-known status of the client’s marks, our chance of success in possible declarations of invalidity would be dramatically reduced. In this condition, we have to revert to the option of the declaration of invalidity, while the evidence collection work is really challenging in supporting such an invalidation action. 

Our Strategy

First of all, we further sorted and compared the use evidence submitted by the Respondent in the non-use cancellation procedures, conducted a series of online searches, found out the information about the third parties’ brands as shown in their evidence, and have the same organized and notarized. At the same time, we conducted field investigation into the actual business of the Respondent and their use status of the Disputed Mark, obtained the actual business use materials, and carefully have the same compared with the use evidence submitted by the Respondent in the non-use cancellation procedures. Through the aforesaid works, we collected strong evidence to prove that the evidence of use submitted by the Respondent was fabricated by the Respondent, and the Respondent has fraud advertisement in actual business , and also copied and imitated the third parties’ brands as well as the business promotion materials. With the aforesaid evidence, we claimed that the Respondent had continuous copying and imitating behaviors, and had bad faith in cling to other parties’ famous trademark and brands. The purpose of application for the Disputed Mark is obviously to mislead the consumers that it relates to our client. Thus, the aforesaid evidence can prove the subjective malice of the Respondent.

Secondly, we communicated with the client and obtained a lot of evidence of prior use of the "FRICK" series of trademarks from the client.

Thirdly, we registered the copyright of the FRICK logo to further support the client's prior use of the "FRICK" series trademarks., and collected related evidence to prove the client’s prior copyright work.

Finally, we conducted further online research to gain a comprehensive searching of the visibility, exposure and use of the client's "FRICK" series trademarks, and collected useful evidence from online reports.

Based on the above, in our invalidation grounds, we made a detailed presentation of the client's prior use and the Respondent's bad faith. We raised following main points of arguments:

The Applicant enjoyed prior copyrights on the FRICK logo, which were originally created by the Applicant’s affiliated company and assigned to the Applicant. The creation date of the FRICK logo was much earlier than the application date of the Disputed Mark. The FRICK logo had been used publicly since at least 2001, and obtained a high reputation in the Chinese market through continuous use and promotion. The disputed trademark is substantially similar to the FRICK logo, and the Respondent maliciously applied for registration of the Disputed Mark with knowledge of the existence of the Applicant's prior works. The registration and use of the Disputed Mark has damaged the Applicant's prior copyright of the FRICK logo and will lead to confusion among the public. According to Articles 9 and 32 of the Trademark Law, the registration of the Disputed Mark should be declared invalid.

The FRICK series trademarks of the Applicant had obtained certain influence in China on the same/similar goods as the Disputed Mark before the filing date of the Disputed Mark. The Respondent was aware of the existence of the Applicant's prior trademarks and made a malicious attempt to infringe upon it. Therefore, the registration of the Disputed mark infringed the Applicant's prior trademark rights. Taking into account the existing popularity and wide recognition of the Applicant's trademarks in China, if the Disputed Mark is put into use, it will certainly cause great confusion in the market and make consumers confused about the source of the goods, thus resulting in misidentification and mispurchase. According to Articles 9 and 32 of the Trademark Law, the registration of the Disputed Mark should be declared invalid.

The Disputed Mark is a malicious copying and imitation of the famous FRICK series trademarks and copyrighted work, and its registration and use come from an obvious subjective intention of free-riding. In addition, the Respondent also copied and applied for registration of trademarks highly similar to other famous brands and used them on similar goods. The registration and use of the Disputed Mark violated the Principle of Good Faith, which will definitely weaken the distinctiveness of Applicant’s trademarks, derogate the market reputation of the Applicant, seriously damage the interests of the relevant public, and cause adverse social impact. According to Articles 7, 10.1(7)(8) and 44.1 of the Trademark Law, the registration of the Disputed Mark should be declared invalid.

Finally, the CNIPA decides that:

Article 32 of the China Trademark Law 2013 protects the prior use of a trademark on the condition that the trademark has been used on goods or services identical or similar to the goods designated by the disputed trademark before the date of application of the disputed trademark, and is known to the relevant public within a certain range. Specifically in this case, firstly, combined with the evidence submitted by the Applicant, it can be proved that prior to the application date of the Disputed Mark, the FRICK series trademarks were used by the Applicant in refrigerating refrigeration units, compressors and other goods, and had a certain degree of influence. Secondly, the distinctive part of the Disputed Mark, "FRICK", is identical to the Applicant's previously used and famous "FRICK" trademark in terms of composition and pronunciation, and the goods designated by the Disputed Mark, such as refrigerating equipment and devices, are identical to the goods actually used in the first place. The goods such as refrigeration equipment and devices designated by the disputed trademark and the goods such as refrigeration and cooling units and compressors in prior actual use are similar goods or closely related in terms of function and use. Under the above circumstances, the registration and use of the Disputed Mark is likely to cause confusion among consumers and service providers. Therefore, the registration of the Disputed Mark has constituted the situation referred to in Article 32 of the China Trademark Law 2013 that “a trademark application shall not be an improper means to register a trademark that is already in use by another party which enjoys substantial influence.”

Accordingly, the registrations of the Disputed Marks were declared invalid on all the designated goods. 

Conclusion

Firstly, for winning the case, we well protected the business interests of our client and maximize the benefits of the client.

Secondly, through this case, we have become clearer that our advice must be based on the existing facts and evidence, taking into account various factors such as the success rate of the action and the cost to be borne by the client. Upon receipt of the review of non-use cancellation decisions, we have the option of either filing an administrative lawsuit against the review decisions or filing Declaration of Invalidity against the Disputed Marks. However, in view of the high cost of litigation and the evidence of bad faith collected, we chose to file invalidation applications against the Disputed Marks instead of filing lawsuits.

Thirdly, through this case, we have broadened our options, that is, when it is difficult to collect malicious evidence of invalidation from public channels, we can try to file a non-use cancellation. It is possible that in order to prove the use of the disputed trademark, the respondent may submit some use evidence, revealing the bad faith of the Respondent or their infringement behaviords, which can be used to support our invalidation application or other enforcement actions.