In China, goods and services in different classes
and sub-classes* are considered dissimilar,
subject to limited exceptions specified in the
classification book. Brand owners often find such
rigidity a hurdle in their actions against squatters
when their existing trademark registrations do
not cover the sub-class(es) which the infringing
marks are in.
We have however been able to surmount such
hurdle for our clients. We are happy to share
three of our recent success stories and highlight
how brand owners can ace in cross-class and
cross-sub-class actions against squatters.
I. SUCCESSFUL CROSS-CLASS OPPOSITION BASED
ON DISTINCTIVENESS AND ORIGINALITY OF
BRAND OWNER’S MARK AND APPLICANT’S BAD
FAITH
We filed an opposition on behalf of an
international luxury cosmetics house against a
mark comprising of its brand name plus the word
“BEAUTY” in English and Chinese on cosmetic
utensils and other goods in Class 21.
We argued that the opposed mark fully
incorporates the client’s prior registrations which are distinctive and original, and that the
Applicant has filed many other trademarks
which are copies of other marks of certain
originality or fame (some of which have already
been opposed). The CNIPA held that such
behaviours constituted obtaining trademark
registrations with deceptive or improper means.
Despite the client did not own any prior
registration for its English brand name in the
relevant sub-class or its Chinese brand name in
the relevant class, we managed to secure a
favourable opposition decision which was
central to our client’s protection of its house
marks.
II. SUCCESSFUL CROSS-SUB-CLASS OPPOSITION:
GOODS IN DIFFERENT SUB-CLASSES CONSIDERED
SIMILAR DUE TO THEIR SIMILAR FUNCTION
We filed an opposition on behalf of a global
media and lifestyle company whose Chinese
house mark consists of four Chinese characters.
The opposed mark copies client’s Chinese
house mark and merely changes the second
Chinese character. Client’s prior similar mark
covers “clothing”, “belts” and “sports shoes”
whereas the designated goods of the opposed mark are “sleeping masks” and “shower caps”,
which are under different sub-classes in Class 25.
We have successfully persuaded the CNIPA to
go beyond the classification book and consider
association of goods in terms of their functions
and usage. The CNIPA accepted our argument
that the opposed goods are similar in terms of
functions, usage, distribution channels and
consumers. Despite the client’s mark and the
opposed mark are in different sub-classes, the
CNIPA considered that their co-existence would
easily cause consumer confusion and refused
the application.
III. SUCCESSFUL INVALIDATIONS AFTER
UNSUCCESSFUL OPPOSITIONS
Even if the opposition is unsuccessful, it does not
mean that the brand owner has to wait for three
years to file a non-use cancellation as a fallback.
We observe that the CNIPA tends to adopt a
more holistic approach in determining similarity
of goods and services in invalidations than in
oppositions, and we have obtained favourable
invalidation decisions based on the same sets of
facts and evidence of unsuccessful oppositions.
We act for a US-based thermal products
producer, who owns two registrations for its
house marks, each comprising of its brand name
in English and Chinese, covering its core goods
“temperature indicators” and “electric heating
apparatus” etc. in Classes 9 and 11 respectively.
The squatter operates in the same industry as the
client, and it applied for registration of the
client’s brand name in Chinese for goods in subclasses in Classes 9 and 11 that are not covered
by client’s registrations. The client’s brand was
the only one brand that the squatter had
plagiarized.
We filed oppositions against the counterfeit
marks, adducing various contracts, orders and
invoices showing a sales volume totally over RMB
20 million in order to demonstrate use of the client’s marks for 5 years preceding the date
application. One of the squatter’s shareholders
had registered various domain names consisting
of the client’s brand name in English, and
arbitration panels had found that these domain
names were registered in bad faith and ordered
that the domain names be transferred to the
client. We also submitted these arbitral decisions
in support of the opposition. However, the
CNIPA ruled against the client in the oppositions
given that the goods fall within different subclasses and are dissimilar as per the classification
book.
We then filed invalidations against the infringing
marks with the same set of facts and evidence.
This time, the CNIPA ruled in our client’s favour.
KEY TAKEAWAYS
Despite the rigid sub-class system in China, we
have found ways to persuade examiners to find
similarity between goods and/or services across
classes and sub-classes. The following are the
key to the above success stories:
-
• Evidence showing originality, distinctiveness, reputation and prior use of the brand owner’s marks, such as sales and advertisingrelated contracts and invoices;
-
• Bad faith of the squatter, such as other bad faith IP filings of the squatter and prior dealings between the parties; and
-
• Sound arguments to the effect that the goods and services, despite under different classes or sub-classes, are closely related in terms of functions, usage, sales and production avenues and target consumers.
Further, client should not be dissuaded by a
negative decision at the opposition stage, and
is encouraged to file an invalidation to have the
matter considered by a different panel.
With that being said, tackling dissimilar goods
and services can still be an uphill battle –
squatters may apply for and register brand
owners’ marks on a variety of goods and
services, and brand owners may not have
accumulated sufficient evidence to counter the
infringing activities. Prevention is better than
cure. Brand owners should secure trademark
registrations beyond the goods and services
they actually provide. Registrations should cover all related goods and services, and all subclasses in classes which the major and related
goods and services belong. Use evidence
should be preserved, and re-filings should be
made triannually where the marks are not in use
or evidence are unavailable.
*In China, goods and services in each class is further divided into different
sub-class based on their nature.
© Vivien Chan & Co., Newsletter issue 09, October 2022
All Rights Reserved
About Us
Vivien Chan & Co. is a full-service law practice with offices in Hong Kong (1985) and Beijing (1993). We are consistently recognized as a premier law firm for and in Greater China. With over 35 years of doing business in Greater China, our Hong Kong and China teams have an in-depth understanding and knowledge of the legal culture and market dynamics.
