Fujian Johnson Valve Co., Ltd. and its affiliated company, Johnson Controls Valve Co., Ltd., have successively applied for the registration of multiple trademarks in various categories of goods and services, including Classes 6, 7, 9, 11, 17, 35, and 37. These trademarks include "JOHNSEN CONTROL SV”, "约翰江森”, "JCI”, "泰科江森”, and "IJCII”. These trademarks are identical or similar to the previously registered trademarks and trade names of TYCO FIRE & SECURITY GMBH and its affiliated companies, such as "Johnson Controls”, the trade name "TYCO”, and the parent company's abbreviation "JCI”. Additionally, Fujian Johnson Valve Co., Ltd. and its affiliated companies have been using these trademarks to conduct business, which allegedly constitutes trademark infringement and unfair competition.

In this case, we represented TYCO FIRE & SECURITY GMBH in filing an invalidation request against the trademark application No. 66220129 for "二江·森二" in Class 9, submitted by Fujian Johnson Valve Co., Ltd.

Since our client did not possess prior trademark registrations on legally similar goods nor sufficient evidence of use, the crux of the case lay in whether we could secure trademark protection across dissimilar goods based on the opponent's bad faith, thereby preventing the registration of the disputed trademark. Through our diligent efforts, we conducted thorough research, gathered evidence, and argued that the opponent and its affiliates systematically copied and imitated numerous prior rights, including the trademarks and trade names of TYCO FIRE & SECURITY GMBH and its affiliates.

Ultimately, in the invalidation ruling, the Trademark Review and Adjudication Board (TRAB) determined that the trademark application by Fujian Johnson Valve Co., Ltd. constituted repeated registration attempts of specific trademarks or trade names with strong distinctiveness belonging to the same entity. The Board found that the applicant intended to copy and imitate others' trademarks, hoard trademarks for unfair competition or illicit gains, violated the principle of good faith, disrupted the normal order of trademark registration management, and harmed fair market competition. Consequently, the registration was declared invalid pursuant to Article 44, Paragraph 1 of the Trademark Law.

This case not only resulted in the invalidation of the maliciously copied and imitated trademark but also established the opponent's and its affiliates' bad faith in copying, imitating, and hoarding trademarks, providing favorable guidance for other related cases.

Background

In this case, we initiated a trademark invalidation proceeding against an infringing party with evident malicious intent. During the invalidation process, we provided ample evidence demonstrating the systematic copying and imitation by the infringing party and its affiliates of the trademarks and trade names of our client, TYCO FIRE & SECURITY GMBH, and its affiliated companies. Ultimately, the CNIPA invoked Article 44.1 of the Trademark Law, determining that the respondent's trademark applications involved the replication and imitation of others' trademarks, hoarding trademarks for unfair competition or illicit gains, and violated the principle of good faith. Consequently, the disputed trademark was declared invalid. This decision will undoubtedly benefit other opposition and invalidation cases against the trademarks held by the infringing party and its affiliates, as well as the ongoing civil litigation case.

Difficulties

1. Lack of Direct Conflict with Prior Registered Trademarks: TYCO FIRE & SECURITY GMBH's previously registered trademark "江森自控" only conflicted with the disputed trademark "二江·森二" on some of the designated goods. Therefore, during the opposition phase, the CNIPA only recognized the similarity between the two trademarks for certain goods under Article 30 of the Trademark Law, and approved the registration of the disputed trademark "二江·森二" for the remaining non-conflicting goods.

2. Lack of Sufficient Evidence of Use for Non-Conflicting Goods: Regarding the non-conflicting designated goods, the client was unable to provide sufficient evidence of use. Consequently, it was difficult to assert the protection of the client's prior trademarks on these goods under Article 32 or Article 13 of the Trademark Law.

3. Imitation and Copying Targeted at a Specific Entity: Article 44.1 of the Trademark Law, serves as a catch-all provision to protect public order and public interest. In practice, if the applicant has imitated or copied the trademarks of multiple entities, there are numerous successful cases where "other improper means" under Article 44.1 have been invoked to invalidate the trademark. However, in this case, the applicant and its affiliates only imitated and copied the trademarks and trade names of our client. Under such circumstances, it is less common to find cases where "other improper means" under Article 44.1 are successfully invoked.

Significance

In this case, through our comprehensive strategic actions, we successfully applied Article 44.1 of the Trademark Law to recognize "other improper means" despite the fact that the respondent only imitated and copied the trademarks and trade names of our client. This recognition is uncommon in examination practice and has provided multiple benefits for our client:

1. Protecting Client's Commercial Interests: By winning the case, we effectively cleared the infringing trademark, thereby protecting and maximizing our client's commercial interests.

2. Strengthening Advantages in Subsequent Cases: Article 44.1 of the Trademark Law can be considered an "absolute ground" in opposition and invalidation cases. Thus, the recognition in this case will undoubtedly benefit other opposition and invalidation cases against the infringing entity and its affiliates, as well as the ongoing civil litigation case.

3. Guiding Future Case Strategies: In future similar cases, especially when the client's prior trademarks and trade names are repeatedly imitated and copied, a more robust overall strategy should be considered rather than being limited to conflicting designated goods and services. By employing a coordinated overall strategy, the outcomes of individual cases can complement each other, thereby increasing the overall success rate.