The administrative dispute between the plaintiff Haolai Chemical (Zhongshan) Co., LTD and the defendant CNIPA and the third party Zhang Jinhua on the request for invalidation of the trademark no. 9600891 "黑美人and device" (the disputed trademark ) was heard publicly by The Beijing Intellectual Property Court on October 26, 2021, and the plaintiff's lawsuit was rejected. And Gaowo represented the administrative stage and the first-instance litigation stage of the case, and won in both stages!
Trademark information
The disputed mark:
The mark “黑美人and device” with No.9600891
Registrant: Zhang Jinhua (our client)
The designated goods (class 7):tools [parts of machines];drilling heads [parts of machines];Cutting tools (including mechanical blades);holemaking tools;Non-manual hand tools;electric hand drills;wind tools;pneumatic nail guns;spray guns for paint;Hand-held tools that are not manually operated.
cited marks
cited mark 1:
The mark “黑人” with No.960658
Registrant:Haowei Co., LTD. The designated goods(class 3):toothpaste;Teeth powder
cited mark 2:
The mark “黑人” with No.1260153
Registrant:Haowei Co., LTD.The designated goods(class 3):cakes of soap; Detergent;Teeth powder;toothpaste,etc.
Cited mark 3:
The device mark with No.1260154
Registrant:Haowei Co., LTD. The designated goods(class 3):cakes of soap; Detergent;Teeth powder;toothpaste,etc.
The introduction of the case
The applicant, Haolai Chemical (Zhongshan) Co., LTD,filed invalidation on March 5, 2020 against the disputed mark “黑美人 and device” with No.9600891 filed by Zhang Jinhua.
Zhang Jinhua entrusted Gaowo IP firm to represent the invalidation response. And after our responsible attorney responded actively,the CNIPA made a decision on the invalidation request of Shang Ping Zi [2021] No. 59618 regarding the trademark No. 9600891 "黑美人and device" (hereinafter referred to as the disputed trademark)
And the decision determines that :1.the disputed mark did not copy and imitate the mark “黑人”with No.960658(cited mark 1),the mark “黑人”with No.1260153(cited mark 2) and the device mark with No.1260154(cited mark 3). So the application for registration of the disputed mark did not constitute the situation indicated by Article 13 of Trademark Law 2001. 2.The registration of the disputed mark did not violate the provisions of Article 4, Item 7 and 8 of Paragraph 1 of Article 10 and Paragraph 1 of Article 44 of Trademark Law 2001. In conclusion, according to the provisions of Paragraph 3 of Article 44 , Paragraph 2 of Article 45 and Article 46 of Trademark Law 2019, the disputed mark should be maintained.
And the plaintiff,Haolai Chemical (Zhongshan) Co., LTD, was dissatisfied with the decision and appealed to the Beijing Intellectual property Court.
And the third party, Zhang Jinhua, entrusted Beijing Gaowo Law Firm to act as the agent of this litigation case. And our law attorney team, after receiving further entrustment, carried out actively the analysis and discussion of the case,the control of the response strategies and further collation of evidence materials. And actively communicating with the concerned parties and analyzing the case comprehensively and deeply, our responsible attorney fought it vigorously.
The Judgement of the court
The focus of this case:1.whether the application for registration of the disputed mark violated the provisions of Paragraph 2 of Article 13 of Trademark Law 2001;2.whether the application for registration of the disputed mark violated the provisions of Paragraph 1 of Article 41 of Trademark Law 2001;
The Beijing Intellectual property Court thought that :
As for focus 1,the paragraph 2 of Article 13 of Trademark Law 2001 indicates that:Where a trademark in respect of which the application for registration is filed for use for non-identical or dissimilar goods is a reproduction, imitation or translation of the well-known mark of another person that has been registered in China, misleads the public and is likely to create prejudice to the interests of the well-known mark registrant, it shall be rejected for registration and prohibited from use.
In this case, the evidences submitted by the plaintiff could prove that prior to the application date of the disputed mark, cited mark 1-3 have obtained high popularity on products like toothpaste after promotion, but the products “tools [parts of machines]”and“drilling heads [parts of machines]”designated by the disputed mark are different from the goods like “toothpaste”on which the three cited marks are known. And they are not related in function, use and sales channel. Besides, the disputed mark is different from the three cited marks in characters contained, device and meaning.So the registration and use of the disputed mark would not mislead the public and cause damages to the interests of the plaintiff. So the application for registration of the disputed mark did not violate the provisions of the Paragraph 2 of Article 13 of Trademark Law 2001.
With regard to focus 2,the paragraph 1 of Article 41 of Trademark Law 2001 indicated that :Where a registered trademark stands in violation of the provisions of Article 10,11 and 12 of this law, or the registration of a trademark was acquired by fraud or any other unfair means, the Trademark Office shall cancel the registered trademark in question; and any other organization or individual may request the TRAB to make an adjudication to cancel such a registered trademark. In the provisions, the part“the registration of a trademark was acquired by fraud or any other unfair means”refers to the absolute cause of cancellation of trademark registration, generally indicates the act of trademark registration that damages public order or public interest, or interferes with the order of trademark registration management .
In this case, the evidence submitted by the plaintiff are not sufficient to prove that the disputed mark was registered by unfair means and will cause damages to the public order or public interests or will disturb the normal trademark management order. So the application for registration of the disputed mark did not violate the provisions of paragraph 1 of Article 41 of Trademark Law 2001.
And in the trial, the court accepted the views of Gaowo's attorney, and made the judgment: rejected the lawsuit request of the plaintiff Haolai Chemical (Zhongshan) Co., LTD.
