Recently, our firm secured a victory in the second-instance administrative litigation concerning a trademark invalidation request filed by an individual. The second-instance court ruled to revoke the first-instance judgment, revoke the Trademark Invalidation Decision issued by the China National Intellectual Property Administration (CNIPA), and ordered CNIPA to re-adjudicate the plaintiff’s invalidation request.
The term “other improper means” under Article 44(1) of the Trademark Law includes the actions such as batch or large-scale squatting of others’ trademarks with a certain degree of popularity.
The plaintiff, Mr. Moon (a Korean citizen), had previously registered and used the trademark A on table tennis products in Korea. In China, a party not involved in the case registered the highly similar trademark a (hereinafter referred to as the “Trademark at issue”) on identical goods and later assigned it to the third party in this case.
Both CNIPA and the first-instance court held that the plaintiff’s evidence was insufficient to prove that the registration of the trademark at issue constituted “registration by other improper means” under Article 44(1) of the Trademark Law.
During the second instance, our firm submitted substantial evidence proving that: i. most trademarks registered under the name of the party not involved in the case and the third party in this case were copies or imitations of others’ well-known trademarks; ii. the party not involved in the case assigned eight trademarks (including the trademark at issue) to the third party, all of which imitated internationally renowned brands; and iii. both parties had been determined in multiple refusal (review) decisions and invalidation rulings to have intentionally copied others’ trademarks, violating Article 44(1) of the Trademark Law.
The second-instance court accepted our arguments, ruling that the registration of the trademark at issue disrupted the normal order of trademark administration, harmed public interests, and clearly violated the principle of good faith. Thus, the registration constituted “registration by other improper means” under Article 44(1) of the 2013 Trademark Law. The first-instance judgment and the challenged CNIPA ruling were erroneous and were thereby overturned.
The term “other improper means” under Article 44(1) of the Trademark Law includes the actions such as batch or large-scale squatting of others’ trademarks with a certain degree of popularity.
The plaintiff, Mr. Moon (a Korean citizen), had previously registered and used the trademark A on table tennis products in Korea. In China, a party not involved in the case registered the highly similar trademark a (hereinafter referred to as the “Trademark at issue”) on identical goods and later assigned it to the third party in this case.
Both CNIPA and the first-instance court held that the plaintiff’s evidence was insufficient to prove that the registration of the trademark at issue constituted “registration by other improper means” under Article 44(1) of the Trademark Law.
During the second instance, our firm submitted substantial evidence proving that: i. most trademarks registered under the name of the party not involved in the case and the third party in this case were copies or imitations of others’ well-known trademarks; ii. the party not involved in the case assigned eight trademarks (including the trademark at issue) to the third party, all of which imitated internationally renowned brands; and iii. both parties had been determined in multiple refusal (review) decisions and invalidation rulings to have intentionally copied others’ trademarks, violating Article 44(1) of the Trademark Law.
The second-instance court accepted our arguments, ruling that the registration of the trademark at issue disrupted the normal order of trademark administration, harmed public interests, and clearly violated the principle of good faith. Thus, the registration constituted “registration by other improper means” under Article 44(1) of the 2013 Trademark Law. The first-instance judgment and the challenged CNIPA ruling were erroneous and were thereby overturned.