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The application of the Principle of Good Faith in the trademark Opposition

时间:2019-12-11 16:44:40  点击:

D & H Law Firm successfully represented Hewy Wine Chillers in a series of Trademark Oppositions
On April 23, 2019, the amendment on China Trademark Law has been officially announced, and the effective date of which is set as of November 1, 2019.
Notably, one of the prominent changes is, the “malicious registration” will become an applicable reason for “refusal” decisions to be acted by China Trademark authority in the preliminary examinations, and also a basis for the “appeals” quoted by the trademark owners, when filing oppositions against applications for the same or similar marks’ registration. This move is expected to effectively curb the growing number of malicious registrations in recent years.
Reviewing the judicial practice of trademark disputes in recent years, the Trademark Office has actually effectively cracked down on malicious registration applications within the frame of existing Trademark Law.  This can be reflected in several cases that D & H Law Firm (hereinafter referred to as “D&H”) has represented, including The Hewy Wine Chillers LLC vs TPT (individual applicant) for Trademark Applications Dispute.
Hewy Wine Chillers LLC (hereinafter referred to as “Hewy”), based in USA is engaging in innovative barware and lifestyle commodities creating and manufacturing. With the business development in China, it applied for the registration of “CORKCICLE.” and “酷仕客” marks in 2012, for the designated commodities “Wine Cooler; Bottle Stopper” in Classification 21st .
On October 8, 2016, T. PT (a Chinese citizen) submitted 5 applications of trademark “CORKCICLE” and “酷仕客” for the designated commodities on classification 10th, 18th, 21st and 28th .  All those applications were then approved by the Trademark Office after the preliminary formality examination, and entered the “published for opposition” stage.
Subsequently, D & H was assigned by Hewy to file oppositions to T PT’s applications in due course.
D & H’s opinion:
Although the designated goods and classifications of T PT’s applications are different from Hewy’s, the trademark “CORKCICLE” and “酷仕客”are identical to the previously registered marks owned by Hewy.  In addition, T PT has tendered more than 200 applications simultaneously, which is obviously beyond the normal business needs.  D & H claims that T PT’s applications has violated the provisions of Article 30 of the Trademark Law and damaged the exclusive right of Hewy, the owner of the previously registered identical marks; in addition, they are against the principle of “good faith” as stated in article 7 of China Trademark Law.
Decisions Made By Trademark Office Appeal Board
The Trademark Office Appeal Board believes that the opposed (T. PT) has applied for more than two hundred trademarks in various categories, including many with the same or similar trademarks and graphics that have been used and/or ingeniously registered by others.  The opposed failed to reasonably explain the above-mentioned behavior, and their applications for registrations of a large number of trademarks clearly exceeded the normal business operations. Therefore, in combination with the fact that the opposed objection trademarks are identical to the quoted in the case, it can be determined that the opposed has the subjective intention of copying, plagiarizing and imitating the trademarks of others, violating the principle of good faith and disturbing the fairness of the competitive market order.
Based on above, according to the provisions of Articles 7, 30 and 35 of the Trademark Law, the objected trademarks registrations are not granted.   
Author:Kristen Lei , Jenny Jin

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