Tips for Remedies against Squatting

   关注华进知识产权有助于学习新知识噢！

Tips for Remedies against Squatting

Sophie Li, Lucy Zheng

Previously, we have talked about the registration and use of the Chinese-character trademark, as well as proactive measures the foreign trademark owner can take to prevent trademark squatting in advance. However, trademark squatting may have already happened before all of these.

Since the Chinese name and the foreign-language trademark are in different languages, it seems to be much more difficult to fight against trademark squatting of Chinese name basing on foreign-language trademark. In fact, the Chinese trademark law and regulations have provided various legal basis and remedies for the foreign trademark owners in dealing with similar cases.

 Article 30 of the Trademark Law stipulates refusal on trademark application which is identical with or similar to prior trademark registration/application on the same or similar goods/services.

In “LAFITE” vs. “拉菲庄园 (la fei zhuang yuan)” trademark invalidation case, the Supreme Court recognized that “拉菲” and “LAFITE” had subjectively formed a stable corresponding relationship; thus, “拉菲庄园” had constituted similar trademark to “LAFITE” and shall be invalidated.

This case was elected as the top 10 IP litigation cases of 2016 by the Supreme Court, which has significant meaning in determining the similarity between a foreign trademark and a Chinese name. From the courts’ verdicts, we could see that the courts are likely to emphasize whether the Chinese name and the foreign trademark have been build up a unique and stable correspondence. When encountering similar situation, the foreign trademark owner may prove it from three aspects:

(1) the activeness of use of the Chinese name;

(2) the recognition of the Chinese name by official organizations; and -

(3) the usage and recognition of the Chinese name by the public and media.

 Article 13 of the Trademark Law protects the well-known trademark, especially the registered well-known trademark on non-identical or dissimilar goods/services against trademark copy, imitation or translation that misleads the public and possibly damages the well-known trademark owner’s interests.

In “TIFFANY” vs. “蒂凡尼 (di fan ni)” trademark invalidation case, Tiffany & Co. succeeded to invalidated the trademark “蒂凡尼” registered in Class 27 by claiming and proving that the disputed mark is a copy and imitation to Tiffany & Co.’s well-known trademark “TIFFANY”.

In this case, although Tiffany & Co. had never initiatively used the Chinese name “蒂凡尼” but instead used “蒂芙尼” for its English trademark “TIFFANY”, the well-known reputation of its mark helped to strengthen the connection between the disputed mark “蒂凡尼” & the cited mark “TIFFANY”. In other words, the higher reputation the foreign trademark enjoy, the requirement on the unique and stable correspondence between the foreign trademark and the Chinese name could be moderately reduced.

 Article 15 of the Trademark Law prescribes opposition against related party’s trademark filing in bad faith.

Basing on this ground, the foreign trademark owner should have used the Chinese name on the same or similar goods, but neither needs to prove its reputation in China, nor needs to show the stable corresponding relation between the Chinese name and the foreign-language mark. The key point is that there is certain relationship between the petitioner and the squatter, such as agent, representative, contractual, business or other relationship.

 Article 44.1 of the Trademark Law renders invalidation of a registered trademark which was acquired by fraud or any other unfair means.

The newly announced Trademark Review and Trial Standards by the CTMO and the TRAB on January 4, 2017 further provide that the following situations shall belong to “unfair means” prescribed in Article 44.1:

(1) applying and registering a number of trademarks which are identical with or similar to other’s trademarks of strong distinctiveness;

(2) applying and registering a number of trademarks that are identical with or similar to other’s trademark names, company names, names of social organizations and other entity names, or special names/packaging/decoration of famous products;

(3) applying and registering a large number of trademarks obviously without the true use intent;

This provision would be beneficial to foreign trademark owner, provided that: (1) the Chinese name, no matter by active use or passive use, has been build up a stable corresponding relation with the foreign trademark; and, (2) the trademark squatter obtained the registration of the Chinese name by unfair means.

Authors:Sophie Li, Lucy Zheng

Editor:Jiezhi Guo

全国热线电话：400-020-9966

公司官网：www.acip.cn

投稿邮箱：[e-mail]

华进现已入驻知乎、新浪微博。

搜索“华进知识产权”，关注我们吧~