CHANG TSI
Insights
This case is an administrative dispute on trademark invalidation action. The Appellant I THE TJX COMPANIES, INC., is a world-renowned retailer of apparel and home fashion products and the most consistent, successful and powerful apparel retail channel in the United States over the past 30 years. Appellant I pioneered the off-price department store industry and has remained at the forefront of the industry, becoming a new leader in the department store industry. Founded in 1976, TJX has now become a large chain of off-price department stores with more than 3,600 stores in nine countries including the United States, Canada and Europe, and around 10 chain brands including T. J. Maxx, Marshalls and HomeGoods, with annual sales revenue of more than $30 billion. Appellant II, NBC Fourth Real Estate, Inc. is the factual owner of the trademarks and Copyrights in the "T.J.MAXX" and "TJX" series artworks. Since 1999, Appellant II has been licensing TJX to use the foregoing rights.
The Appellant found that a Chinese individual Pan Zhiyu had applied for and obtained registration of "T.J.MAXX" mark under No. 32029672 in Class 21 designating on the goods such as “electric toothbrushes; electric toothbrush replacement head” (hereinafter referred to as the Disputed Mark). The Disputed Mark is confusingly similar to “TJX” trademark / trade name, “T.J.MAXX” and “T.K.MAXX” series trademarks previously used by the Appellant that have already enjoyed high visibility and influence, and the designated goods are highly related. The Disputed Mark is a malicious plagiarism of the trademark previously used by the Appellant with certain influence. The registration and use of the Disputed Mark will dilute the Appellant’s well-known trademark, mislead the relevant public into thinking that the Disputed Mark is related to the Appellant, seriously disturb the market order and cause adverse social effects. Therefore, on behalf of the Appellant, we filed a trademark invalidation against the Disputed Mark.
However, both the CNIPA and the Beijing Intellectual Property Court held that the Disputed Mark and the Appellant’s prior cited trademarks do not constitute similar marks used on similar goods or services, and the evidence is not sufficient to prove that the registration of the Disputed Mark violates Article 44.1 of the Trademark Law. In addition, the Beijing Intellectual Property Court also held that the Appellant's "T.J.MAXX" and "TJX" logos are only composed of letters, and both are common fonts, which do not meet the requirements of originality of the work and could not be protected under Chinese Copyright Law. In the end, neither the CNIPA nor Beijing Intellectual Property Court supported our claim for trademark invalidation.
After receiving the first instance judgment, we deem there are obvious errors in the judgment and the CNIPA’s recognition of the prior copyright, as well as the Pan Zhiyu’s bad faith when filing the application. We therefore recommend that the client to file an appeal to the Beijing High Court, requesting the court to revoke the first instance judgment and the CNIPA’s decision, and require CNIPA to make a new decision.
1. Although the Disputed Mark is completely identical to the prior rights of the Appellant, the Appellant has not registered any trademark related to "T.J.MAXX" or "T.J.MAXX" on the goods designated by the Disputed Mark. Therefore it is difficult to persuade the court to apply Article 30 of the Trademark Law to invalidate the Disputed Mark.
2. Although we submitted evidences in both the invalidation stage and litigation stage to prove that Pan Zhiyu has obvious bad faith in registering the Disputed Mark, and he had a history of copying and imitating others’ well-known trademarks, the court of first instance held that the evidence was insufficient to prove that the Disputed Mark was registered by deceptive or other improper means, which brought great difficulties to overturn the case at the second instance.
Our overall strategy is to keep claiming that the Disputed Mark violates Article 30 of the Trademark Law, and emphasizing our claim that the Disputed Mark violates Article 32 and Article 44.1 of the Trademark Law.
First of all, we insisted that the Appellant's prior works "T.J.MAXX" and "TJX" enjoys originality and high artistic beauty, and can be protected as fine art in the sense of copyright law. Each letter in the works is not in common font. The Appellant has its own unique design expression and design ingenuity in these two works, which meet the requirements for originality in the sense of copyright. We hold that the Appellant's English logo creates a visual effect that makes people feel or associate with the English letters themselves, and thus meets the high requirement of originality and can be protected as fine art. In addition, we further submitted a number of prior CNIPA rulings and earlier judgments, which recognized the Appellant's works as copyright and required the collegial panel of second instance to apply the principle of uniformity in examination to support the Appellant's claims.
Secondly, we emphasized the malicious intent of Pan Zhiyu in trademark squatting. First of all, Appellant I is a world-renowned retailer of clothing and home fashion products, as well as the most consistent, successful and powerful clothing retail channel operator in the United States over the past 30 years. Given the popularity of Appellant and its prior rights, Pan could not have applied for a trademark identical to Appellant’s trademark without knowledge of Appellant and its rights. Furthermore, in the telephone survey, Pan Zhiyu had admitted that he was aware of Appellant’s prior trademarks. Pan failed to provide a reasonable explanation for his application of the Disputed Mark.
In support of the above claim, we submitted the evidences of Appellant’s 12 trademarks to the court. Although there were only 12 trademarks in Pan Zhiyu’s name, each one was maliciously copying and imitating the Appellant or third parties’ well-known marks, including “欧莱咖” trademark (copying the well-known watch brand Omega in Chinese), “AcneFree” trademark (copying the well-known garment and cosmetics brand ACNE), “VIVITAR” trademark (copying the well-known lens brand VIVITAR) and so on. We compared each trademark with others’ well-known trademarks, and fully explained to the collegial panel about the Appellee’s history of plagiarism and consistent malicious registration.
Finally, the second instance court supported our invalidation claim based on Article 44.1, and adjudicated that Pan Zhiyu had a consistent malicious intention in copying and squatting others’ prior trademarks. Although 12 trademarks are not many, Pan Zhiyu failed to provide a reasonable explanation for his application, and failed to prove that he has real intention to put the above trademarks in actual commercial use. Therefore, his behavior constitutes the act of hoarding trademarks, disrupting the order of trademark registration, with obvious bad faith, and constitutes the situation of “obtaining registration by other improper means” as stipulated in Article 44.1 of the Trademark Law, and the Disputed Mark shall be invalided for registration. The first instance judgment and the CNIPA’s decision was wrong, and should be revoked. The CNIPA was ordered to make a new decision in this case.
Although the CNIPA and the court of first instance did not support our claims, through our dedicated works, we successfully persuaded the court of second instance to accept our invalidation claim based on Article 44.1 of the Trademark Law. It is very rare for a second instance to overturn a first instance decision, especially when the cited trademark and the core claims have not changed. In the second instance, we selectively submitted evidence and grounds about the other party’s malicious registration and our client’s prior rights. Finally, the second instance overturned the first instance judgment and the invalidation decision. This case provides reference for our future trademark invalidation cases.
