In order to fully demonstrate the role of intellectual property trials in stimulating and guaranteeing innovation, and give play to the exemplary leading value of typical cases, on 25 April 2023, Beijing Higher People's Court held a press conference of Beijing Court Intellectual Property Publicity Week, and released the top ten cases of judicial protection of intellectual property rights by Beijing courts in 2022 and the top ten cases of judicial protection of granting and confirmation of trademark rights. The case of administrative dispute over request for invalidation of the trademark “新(xīn)浪大眼睛圖形” represented by Shang Jiaquan, a partner of Globe-Law, Lu Qiuyu, a partner of Globe-Law, and attorneys Zhang Ying and Zhao Yanjie was successfully selected.

Ten Cases of Judicial Protection of Granting and Confirmation of Trademark Rights by Beijing Courts in 2022

Case 1: Administrative Dispute over Request for Invalidation of the Trademark “新(xīn)浪大眼睛圖形”

Basic Information

Case Nos.: (2022) Jing Xing Zhong No.4207 and (2021) Jing 73 Xing Chu No.9626 

Plaintiff: Hangzhou Xinlang Youyue Catering Management Co., Ltd.

Defendant: China National Intellectual Property Administration 

Third Party: Sina.Com Technology (China) Co., Ltd.

Case Brief

On 23 March 2012, Hangzhou XinlangYouyue Catering Management Co., Ltd. (hereinafter referred to as “XinlangYouyue Company”) applied for registration of Xinlang Figurative Trademark No.10665413 (hereinafter referred to as “Disputed Trademark”, with logo pattern attached), which was approved for use on the services in Class 35 such as “advertising, hotel business management”. Sina.Com Technology (China) Co., Ltd. (hereinafter referred to as “Sina.Com China Company”) filed a request for invalidation with China National Intellectual Property Administration in accordance with Article 41.1 of the Trademark Law 2001 on the ground that the Disputed Trademark is a copy and imitation of its well-known trademark registered and used earlier, which disturbed the normal order of trademark registration management. China National Intellectual Property Administration issued the Sued Decision, holding that the Disputed Trademark was registered with the intention of obviously copying and plagiarizing other people's well-known trademark, which constituted the situation of “obtaining registration by other improper means” referred to in Article 41.1 of the Trademark Law 2021, and ruled that the Disputed Trademark should be declared invalid.

Xinlang Youyue Company refused to accept the decision and filed a lawsuit with the court of first instance. The court of first instance ruled that the claim of Xinlang Youyue Company was rejected. Xinlang Youyue Company refused to accept the first-instance judgment and filed an appeal. The court of second instance held that the Disputed Trademark was similar to the figurative trademark “大眼睛” of Sina.Com China Company, which had high popularity and strong distinctiveness, in terms of line composition, overall visual effect and other aspects, and according to the ascertained facts, in addition to the Disputed Trademark, Xinlang Youyue Company, the original co-registrant of the Disputed Trademark and Fei Meng, one of the co-registrants, have successively applied for registration of a number of trademarks that are identical with or similar to the well-known word mark “新(xīn)浪” and the figurative trademark “大眼睛” of Sina.Com China Company. For the application for registration of the above series of trademarks, Xinlang Youyue Company did not give a reasonable explanation, nor submitted sufficient evidence to prove that it had real use intention or real, effective and continuous use behaviors. Xinlang Youyue Company's application for registration has obvious intention of copying and plagiarizing other people's well-known trademarks, disrupting the normal trademark registration management order and damaging the market environment of fair competition. The registration of the Disputed Trademark violates the provisions of Article 41.1 of the Trademark Law 2001. Accordingly, the court of second instance rejected the appeal and maintained the first-instance judgment. 

Comments:

This case is a typical case to stop the malicious registration of trademarks. Trademark applications that lack real intentions and exceed the needs of normal production and operation have seriously affected the normal order of trademark registration and examination, harmed the public interests and the economic interests of normal operators, and should be resolutely curbed and severely cracked down. In this case, after comprehensively considering the associated relationship between Xinlang Youyue Company, the right holder of the Disputed Trademark, and the original co-registrant, as well as the trademarks that the above subjects applied for registration on other services except the Disputed Trademark, the court clearly determined that Xinlang Youyue Company's trademark application and registration behavior disturbed the normal trademark registration management order and damaged the market environment of fair competition, and its trademark should be declared invalid. Through the regulation of malicious registration, this case maintains a good order of trademark registration and management, which is of great significance to crack down on malicious registration and increase intellectual property protection.