[Background]
In July 2012, Dongfang Mingri (Jinjiang) Import & Export Co. (“Dongfang Mingri”) filed an application for registration of word mark in Chinese characters “奔富酒园” (English: BEN FU WINERY, No. 11157214 ), which was granted in December 2015, among others, designating products such as “wine, brandy” in class 33. After registration, Dongfang Mingri began using the trademark for wine products in the Chinese market.
Southcorp Brands Pty Limited (a subsidiary of Treasury Wine Estates, "Southcorp") filed an application for invalidity of the registration of the contested mark "奔富酒园" in March 2016, on the basis that the contested mark was similar to a sign ( “奔富” (pronounced as: BEN FU)) which had already been used by some Southcorp distributors and enjoyed substantial influence, in addition to the fact that the owner of the contested mark had registered a large number of marks that were reproduction, imitation or translation of well-known third-party trademarks, which was contrary to the principle of good faith.
The Trademark Review and Adjudication Board decided to invalidate the registration of the contested trademark, establishing that there was an obvious intention to take unfair advantage of the reputation of renowned trademarks, unfair competition and search for illegal benefits, violating the principle of good faith, disturbing the good order of the management of the trademark registry and fair and orderly competition in the market. Dongfang Mingri's activities were considered to constitute "Acquisition of registration by other improper means«, as established in Art. 44(1) of the Trademark Law of 2014 (same in the Trademark Law Amendment of 2019).
The Beijing Intellectual Property Court rejected Dongfang Mingri's appeal, which was returned by the Beijing High Court.
The case finally goes to the Supreme Court of the PRC
[Decision]
The Supreme Court first summarized the key issue of the case, which was to determine whether the impugned mark “奔富酒园” was registered by other improper means such as those prohibited in Art. 44(1) of the Trade Law. Brands of 2014.
At first, the Court confirmed that the most relevant element of the contested trademark is the first two Chinese characters “奔富 (BEN FU)”, the combination of the remaining two Chinese characters “酒园” means winery, which can only be treated as a common description in the relevant industrial area.
Southcorp provided sufficient evidence to support its argument that the sign “奔富” was first used by some Southcorp distributors in the 1990s to refer to the “Penfolds” brand of wine, a Southcorp product. And, from the perspective of the relevant public, since long before the filing of the contested trademark application, the Chinese characters “奔富 (BEN FU)” have been considered a transliteration of “Penfolds” and therefore created a strong bond with him.
Prior to the case at hand, there had been many trademark infringement and unfair competition disputes between Southcorp and Dongfang Mingri. Previous rulings stated that Dongfang Mingri and its subsidiaries had intentionally misled the public by using articles presenting the wine product “Penfolds” in the media, which constituted unfair competition as well as an infringement of the “PENFOLDS” trademark. .
In relation to the above analysis, the Court concluded that, by filing the application for registration of the contested trademark “奔富酒园”, Dongfang Mingri intends to hold on to the reputation of the wine manufacturer “Penfolds” and to obtain a unfair advantage of it.
Furthermore, the Court considered that the fact that Dongfang Mingri and its subsidiaries have registered a large number (more than 250) of trademarks copied from other reputable trademarks, such as "宾利 (BIN LI, transliteration of BENTLEY)", designating goods and services in classes 33 and 35, it is too much over what is necessary for a normal business.
[Comments]
From the submission of the application for annulment of the trademark registration to obtaining the nullity ruling, this case has come to an end after six years.
In the appeal proceedings before the Beijing High Court, the decision of the TRAB and the ruling of the Beijing Intellectual Property Court to invalidate the challenged trademark, among other things, was based on the fact that the challenged trademark had been used in trade by the owner after registration.
Contrary to the opinion of the Beijing High Court, the Supreme Court clarified the concept «acquiring registration by fraudulent or other improper means» of Art. 44(1) of the Trademark Law of 2014 (there are no changes in the Trademark Law Amendment of 2019), considering that it should be interpreted as the means that had been taken when filing the application for registration, and not the purpose for the registration, which in itself is improper.
Therefore, the fact that the contested mark was put into use, regardless of the level of advertising investment or the effectiveness of the advertising, after registration, cannot invalidate the "improper" nature of the means that were adopted to acquire the registration, and therefore, cannot justify the registration of the trademark.
The Judgment shows the Court's tendency to protect good practices in trademark registration, in a manner consistent with the CNIPA, which continues to harshly combat malicious trademark registration in recent years.
Author Dan liu
Visit our Website
