HongFangLaw ~?Chinese IP Law Updates ~ n’ 40
14 December 2017

How “Jia De Shi” Successfully Blocked the Registration of “Jia De Le”

Recently, the Beijing Intellectual Property Court has delivered a first instance judgment in favor of the Trademark Review and Adjudication Board (“TRAB”, the “Defendant”) after hearing the administrative dispute over grant and validation of the trademark No. 9741931 “Cadelo Jia De Le” (the “Disputed Trademark”, see the below table).The court dismissed the claims of Huai’an HUA MAO Trading Co., Ltd. (the “Plaintiff”) and affirmed the Defendant’s decision disapproving the registration of the Disputed Trademark. The case leads back to July 2012 when the Disputed Trademark was preliminarily approved for registration on “lubricants” etc. in Class 4. It was followed by our Firm’s filing an objection from Chevron Intellectual Property LLC. Nevertheless, the China Trademark Office (“CTMO”) later officially approved the Disputed Trademark for registration. Our Firm, dissatisfied, appealed to the TRAB for objection review in March 2014, after which the authority decided that the Disputed Trademark should not be registered. Plaintiff thus filed an administrative suit in March 2015 against the TRAB, out of dissatisfaction with its decision. In the proceedings, our Firm played a proactive role to protect the rights and interests of our client Chevron Intellectual Property LLC (the “Third Party”).

Our Firm claimed the Third Party’s prior trademark rights pursuant to Article 30 and Article 13.3 of the Trademark Law, citing its two existing registered trademarks on similar goods (collectively the “Cited Trademarks”, see the below table). In light of the Cited Trademarks’ well knowingness and influence, as well as Disputed Trademark’s bad faith imitation of the former composing elements, our Firm argued that the marks constituted similar trademarks on similar goods, which would cause the relevant public to confuse the origins of their designated goods.

The court tried the facts and found that Disputed Trademark is similar to Cited trademarks. In the former, the part “Jia De Le” in Chinese characters is more recognizable to the relevant public and is approximate to the distinct coined words “Jia De Shi” and “De Le” of the latter. The goods designated there under also constitute similar goods.Thus in the eyes of the relevant public, the goods are prone to be identified to be sharing the same origin or to have close relation in regard to the coexistence of the marks on the same or similar goods. For this consideration, the court dismissed the Plaintiff’s claims upon finding that the marks are similar trademarks citing Article 30 of the Trademark Law.

Information of the trademarks involved in this case:

Disputed Trademark Cited Trademark I Cited Trademark II
No. 9741931

12

“Cadelo Jia De Le”

No. 876389

123

“Jia De Shi”

No. 167431

1234

“De Le”

Huai’an HUA MAO Trading Co., Ltd. Chevron Intellectual Property LLC

[Key takeaways on the case by HFL]

  • Key points: In cases of administrative litigation with the right of trademark confirmation, it is imperative that a comprehensive analysis of the trademark dispute and quoted trademark, including glyphs, pronunciation, meaning, the relevant public’s focus, etc., must be conducted first. In addition, the direct relevance, indirect relevance and potential relevance between the goods should be as clear as possible; and the evidence related to the popularity of the citation mark is of great significance to winning the case.
  • Procedural points: In this case, the Third Party did not give up seeking further relief procedures, in the opposition review phase even if its claims were not supported by the CTMO (since the implementation on May 1, 2014 of the newly revised “Trademark Law ” there has been no objection review process proposed by one of the opponents, but rights protection can still be done through the procedure of trademark invalidation, even if it is based on the same facts and reasons, and does not violate the principle of retrial.”) The case received the court’s approval and support, eventually successfully blocking the registration of the trademark dispute, thus safeguarding the earlier trademark rights of the opponent. Therefore, even if the procedure of trademark right confirmation case is complicated and difficult, trademark rights holders should exhaust all means to protect their legal rights from a long-term perspective before giving up.

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