CHANG TSI
Insights
This case is a typical case of a trademark invalidation proceeding against a malicious registration that has been registered for over five years.
The Complainants, LUXEMBOURG BRANDS S.A R.L. and SANFORD, L.P., are affiliated companies (hereinafter collectively referred to as "the Complainants"). They are the rights holders of the "ROTRING"/ “红环”(ROTRING in Chinese) and "SANFORD" trademarks, which have prior registrations in China and have been promoted and used on writing instruments and other goods.
The Disputed Mark, "美运三福红环 USASANFORD ROTRING" (No. 12835361), was applied for by Shanghai Hui Bai Jia Commercial Trade Co., Ltd. (hereinafter referred to as "the original applicant") on June 28, 2013, designated on goods “drawing materials; etc.” in Class 16. After a preliminary examination and publication on October 20, 2014, Complainant 1 (LUXEMBOURG BRANDS S.A R.L.) filed an opposition against the Disputed Mark. The Trademark Office rejected the opposition, allowing the trademark to be registered, with the registration announcement published on January 21, 2017. Subsequently, the Disputed Mark was transferred to Mei Yun San Fu Hong Huan (Shanghai) Trading Co., Ltd. (hereinafter referred to as "the Respondent").
The Complainants entrusted us to file a request for invalidation of the Disputed Mark on June 13, 2023, which already exceeded five years after the trademark was registered. Upon review, the Trademark Review and Adjudication Department (TRAD) of CNIPA found that the registration of the Disputed Mark constituted "obtaining registration by other improper means" as stipulated in Article 44, Paragraph 1 of the Trademark Law, and declared the trademark invalid.
According to Article 45, Paragraph 1 of the Trademark Law, for registered trademarks that violate the provisions of Article 13, Paragraphs 2 and 3; Article 15; Article 16, Paragraph 1; Article 30; Article 31; and Article 32 of the Trademark Law, the prior rights holder or an interested party may request the TRAD to declare the registration invalid within five years from the date of trademark registration. However, there are two exceptions to this five-year limitation:
1. For malicious registrations, the owner of a well-known trademark is not subject to the five-year time limit.
2. Additionally, Article 44, Paragraph 1 of the Trademark Law stipulates that a registered trademark that violates the provisions of Articles 4, 10, 11, 12, or 19, Paragraph 4, or that was obtained through fraudulent or other improper means, is not subject to the five-year time limit.
In this case, the Complainants have difficulty in providing evidence that their cited trademarks "ROTRING"/ “红环”(ROTRING in Chinese) and "SANFORD" had reached well-known status in mainland China before the application date of the Disputed Mark (June 28, 2013). Therefore, it was difficult to meet the first condition for bypassing the five-year limitation. Consequently, we focused our efforts on whether the Disputed Mark met the second condition for bypassing the five-year limitation.
Upon analysis, we determined that the Disputed Mark "美运三福红环 USASANFORD ROTRING" per se did not violate the prohibitions on registration outlined in Articles 10, 11, 12, and 19, Paragraph 4 of the Trademark Law. We conducted an in-depth investigation into the malicious behavior of the Respondent and the original applicant of the Disputed Mark. We carefully studied Chapter 16 of the Trademark Examination and Trial Guidelines regarding "obtaining trademark registration through fraudulent or other improper means" and relevant cases. Ultimately, we identified the key issue of the case as whether the Disputed Mark constituted "obtaining registration by other improper means" as stipulated in Article 44, Paragraph 1 of the Trademark Law, and used this as the basis and focus for bypassing the five-year limitation.
Based on the scenarios listed in the Trademark Examination and Trial Guidelines that fall under "obtaining registration by other improper means" as stipulated in Article 44 of the Trademark Law, we have summarized the following two core elements and gathered relevant evidence and prepared invalidation arguments around these elements:
1. The Respondent and Original Applicant of the Disputed Mark Have Engaged in Extensive Copying of Others' Trademarks
This core element highlights the "quantity" of pirated trademarks, which is crucial for bypassing the five-year limitation and claiming "obtaining registration by other improper means" under Article 44 of the Trademark Law. During our research and evidence collection phase, we noted that the Disputed Mark underwent a transfer process. When determining whether the Disputed Mark constitutes "obtaining registration by other improper means" under Article 44, the original applicant's improper means in applying for the trademark is the key issue. Additionally, if the new applicant after the transfer also engages in malicious registration and violates the principle of good faith, it will significantly impact the direction of the case.
Based on these principles, we investigated the malicious registration behaviors of the original applicant, Shanghai Huibaijia Trading Co., Ltd., and the Respondent, Mei Yun San Fu Hong Huan (Shanghai) Trading Co., Ltd., and found that both entities had engaged in extensive copying of the Complainants' and others' trademarks. Specifically:
The original applicant owns 19 trademarks, including the Disputed Mark in this case. Other trademarks include "TOUCH BRUSH MARKER," "三福;USASANFORD," "JACK RICHESON," "内田," "UCHIDA," "TOPMAPED," and others that are similar to well-known stationery brands with strong originality.
The respondent owns 12 trademarks, all of which are centered around the Complainants' trademarks. For example, the Respondent applied for trademarks such as "USSANFORD PRISMACOLOR PREMIER BRUSH" in Classes 2, 8, 9, and 16 (copying the Complainants'' SANFORD, PRISMACOLOR trademarks), "霹雳马," and "PRISMACOLOR" (copying the Complainants' PRISMACOLOR trademark and its corresponding Chinese trademark "霹雳马").
Additionally, we emphasized that the Respondent operates in the same industry, and therefore should be aware of the Complainants' and others' well-known and highly original stationery brands.
2. The Cited Trademarks of the Applicants and the Prior Trademarks of Others Have a Certain Degree of Fame or Strong Distinctiveness
Although it is challenging for the Complainants to prove that their cited trademarks "ROTRING"/ “红环”(ROTRING in Chinese) and "SANFORD" were well-known before the application date of the Disputed Mark to bypass the five-year limitation, the fame and distinctiveness of the cited trademarks and the prior trademarks of others are important factors when considering "improper means." Therefore, we conducted extensive online searches and evidence collection, emphasizing that the Complainants’ cited trademarks are coined terms with strong distinctiveness, and the evidence in the case can prove that the cited trademarks has been put in use and promotion before the application date of the Disputed Mark. The original applicant's act of combining and overlapping the highly distinctive "ROTRING" and "SANFORD" trademarks to apply for the Disputed Mark cannot be considered coincidental or in good faith.
In preparing our arguments, we listed all the copied trademarks in a table, highlighting their status and any opposition and cancellation review processes they had undergone. We also included screenshots of the promotion and fame of the Complainants' and others' prior trademarks to present to the examiners in a clear and impactful manner.
Based on the aforementioned facts, the TRAD ultimately determined that the actions of the original applicant, Shanghai Huibaijia Trading Co., Ltd., and the Respondent, Mei Yun San Fu Hong Huan (Shanghai) Trading Co., Ltd., in applying for the registration of the disputed trademark and other trademarks, lacked the necessary rationality or legitimacy required for trademark registration. Such malicious registration behaviors disrupt the normal order of trademark registration management and undermine the fair competition in the market. Consequently, the registration application for the disputed trademark constitutes "obtaining registration by other improper means" as stipulated in Article 44, Paragraph 1 of the 2013 Trademark Law. Therefore, the TRAD ruled that the Disputed Mark should be declared invalid.
In this case, through our comprehensive action strategy, we successfully established the application of "other improper means" under Article 44, Paragraph 1 of the Trademark Law, despite the disputed trademark having been registered for over five years. This decision is uncommon in examination practice and has several typical significances:
1. Protecting Client's Commercial Interests: By winning the case through our efforts, we successfully removed the infringing trademark, effectively safeguarding the client's commercial interests and maximizing their benefits.
2. Guiding Future Case Strategies: This case reflects the CNIPA’s more proactive stance against malicious trademark registrations. In future similar cases, even if the disputed trademark has been registered for over five years, it is still essential to comprehensively consider the registrant's malicious registration behavior. By invoking Article 44 of the Trademark Law, we can actively attempt to break through the five-year time limit.
