Recently, the Beijing Intellectual Property Court upheld a lower court's decision and ruled that Appellee Shenzhen Chow Tai Fook Online Media Co., Ltd. (hereinafter, "Chow Tai Fook") and Defendant Beijing Jingdong Century Commerce Co., Ltd. (hereinafter, "Jingdong") did not infringe Appellant/Plaintiff Jun Zheng Ma's trademark because Ma's action of suing Chow Tai Fook with a trademark not registered in good faith constituted an abuse of rights.

    Background

    Chow Tai Fook created the brand "骄人" (pronounced jiao ren) in 2006 and began to sell jewelry under this brand.  In 2008, Ma applied to register the trademark "jiaoren骄人" (Chow Tai Fook's brand with English transliteration added) under Class 14 - Jewelry Products.  The trademark was registered in 2010, and Ma began to manufacture and sell diamonds under "jiaoren骄人" after registration.  After noting that Chow Tai Fook sold rings and necklaces under the brand "骄人" in Jingdong's stores, Ma sued Chow Tai Fook and Jingdong for trademark infringement in the Xicheng District People's Court of Beijing ("lower court").

    The lower court ruled that Chow Tai Fook's use of the brand "骄人" did not infringe Ma's trademark and dismissed all of Ma's claims.  Ma appealed to the Beijing IP Court.

    Beijing IP Court held that:

    1. Principle of good faith

    The trademark "jiaoren骄人" that Ma registered later and the brand "骄人" that Chow Tai Fook used earlier are similar in terms of their word combinations, typesetting designs, and visual effects.

    Before Ma's registration, Chow Tai Fook's brand "骄人" has become well known after extensive use and publicity. Considering Ma's intent, we cannot believe that Ma has acted in good faith.

    The evidence Ma presented cannot show that the trademark "jiaoren骄人" has been used within the scope of trademark law in its registered class. Instead, Ma only presented evidence of licensing the trademark.

    Ma's action constitutes trademark hoarding. Specifically, Ma has applied to register more than 30 trademarks, many of which were similar to well-known trademarks. For example, Ma registered the trademark "泰勒伯顿TAILEBODUN" in 2007.  "泰勒伯顿" is a Chinese transliteration of the famous Taylor-Burton Diamond, and "TAILEBODUN" is an English transliteration of "泰勒伯顿"

    Therefore, the Beijing IP Court held that Ma had violated the principle of good faith and had no legitimate basis for claiming rights in the trademark "jiaoren骄人"

    2. Abuse of right

    In previous litigation between Ma and Chow Tai Fook's offline jewelry store, the court held that Chow Tai Fook had a prior right to use the brand "骄人" before Ma's registration and dismissed Ma's claims. In this case, Ma sued Chow Tai Fook's online stores in a similar way.  Considering Ma's intent, we cannot believe that Ma has acted in good faith.

    Ma has violated the principle of good faith, as mentioned above. The evidence in this case is insufficient to show that Ma had an actual intent to use the trademark "jiaoren 骄人"  Therefore, Ma abused his right by suing Chow Tai Fook, which used their brand "骄人" legitimately.

    In summary, Chow Tai Fook's use of the brand "骄人" did not infringe Ma's trademark right.  Ma's action of suing Chow Tai Fook with a trademark not registered in good faith constituted an abuse of rights.

    The full text of the announcement from the Beijing IP Court can be found here (Chinese only).

    Source: natlawreview.com-Intellectual Property Group