AFD case study – Correct application of articles 4 and 7 of trademark law in opposition proceedings – Intellectual property


China: AFD case study – Correct application of Articles 4 and 7 of the Trademark Law in opposition proceedings

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According to Chinese trademark law, the main legal grounds for right holders to file a trademark opposition include Article 15 (agent-client relationship, other business relationship), Article 30 (prior registration), Article 31 (prior request) and Article 32 (prior rights). Although Article 4 (malicious application not intended to be used) and Article 7 (good faith principle) of the Trademark Law were not the main legal grounds for filing a trademark opposition, if the rightholders can prove (for example, from aspects of the opposing party’s commercial scale, the industry involved, the number and characteristics of their marks and the assignments of their marks) that the opposing party has the subjective maliciousness to copy, imitate, plagiarize the brands of others who have acquired a certain reputation and this with the aim of obtaining large illegal profits, the opposing party has hoarded a large number of brands well beyond the amount actually necessary for its normal business activities, then the correct application of the provisions of Articles 4 and 7 can play an important role in increasing the chances of success in opposition proceedings and has become one or til useful in oppositions. Through the following case, we will demonstrate the importance of correctly applying the provisions of Articles 4 and 7 of the Trademark Law in opposition proceedings.

A well-known British perfume manufacturer (hereinafter referred to as “client”) had very high visibility in the global perfume market. The client found that a trademark (hereinafter referred to as “opposing trademark”) whose registration had been previously approved violated his exclusive right to use a previously registered trademark, and therefore consulted our firm to defend his right.

After checking and comparing the two brands, we provided the customer with the following professional advice:

  1. according to the Chinese Classification of Similar Goods and Services, the named goods of the opposing brand and the customer’s registered brand (hereinafter referred to as the “quoted brand”) were the same or similar; According to China’s trademark examination and testing standards, the opposing trademark and the cited trademark can be regarded as similar, so that the opposing trademark constituted a similar trademark to the cited trademark on similar goods, which does not does not comply with Article 30 of the Trademark Law;

  2. The original opposing trademark applicant (i.e. the original opposing party in this case) was a natural person, but filed more than 600 trademark applications with the Trademark Office, which exceeded the actual amount necessary for normal business operations and were not intended for actual use; many of these trademark applications were for preventive registration of well-known foreign trademarks and names of famous people, so that the original opposite party had the subjective malice to copy and plagiarize the well-known trademarks of others; the original opposing party transferred a large number of trademarks to the current registrant (i.e., the current opposing party in this case), which showed its pattern of trademark hoarding to earn large amounts of illegal profits; therefore, the original opposing party and the current opposing party violated the provisions of Articles 4 and 7 of the Trademark Law.

The client accepted our professional advice and filed a timely trademark opposition with the Trademark Office as we suggested. In the end, the Trademark Office fully supported our opinions above and took the decision not to approve the registration of the opposing mark.

On behalf of the client, our attorneys witnessed all decision-making and witnessed all the proceedings of the above case.

Summary

In the practice of trademark opposition, the provisions of Article 4 and Article 7 are very useful and helpful in increasing the chances of success in opposition proceedings. In particular, when rightholders file a trademark opposition using Article 32 (Previous Rights) of the Trademark Law as the legal basis, if rightholders do not pay attention to collecting the corresponding evidence in their business operations, they will likely lose in the opposition proceedings. lack of evidence. In this case, it will be very helpful to right holders if they can correctly apply the provisions of Articles 4 and 7 of the Trademark Law.

We hope that the above analysis can help right owners achieve a favorable outcome in trademark opposition proceedings.

The article was originally posted on AFD China’s official WeChat account.

The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.

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