An Opposition Case against Trademark where Goods / Services are not similar based on Article 30 of China Trademark Law
date: 2021-12-06 Shuang Lin Read by:

    DHL INTERNATIONAL GMBH (hereinafter referred to as "the opponent") filed an opposition action against markbfa6836e459066ced52566c9c35e385.png” (No. 34428966) which filed on November 2, 2018 by Guangzhou Dehao Trading Co., Ltd. (hereinafter referred to as "the opposed party") based on Articles 4, 7, 10.1.7, 10.1.8, 13.3, 30, 32 and 44 of the trademark law.

    The opponent was jointly established by Adrian Dalsey, Larry Hillblom and Robert Lynn in 1969. DHL is the initial letters of the three founders’ surname.  In 1986, it signed a contract with Sinotrans to start business in mainland China in a joint venture. The opponent is a world-famous logistics company with high popularity and influence in the global market, including China.  According to the "BrandZ Top 100 Most Valuable Global Brands" and "Interbrand Best Global Brands Rankings" released by the world's most professional and authoritative brand evaluation organization, DHL has been on the list for many consecutive years.  In addition, DHL ranked fourth in the ranking of "the world’s most valuable logistics brands of 2017" released by the authoritative evaluation agency.  In China, the opponent has also won a large number of awards from the State Post Bureau, the Ministry of Transport, Customs, local governments, various organizations and associations, such as "advanced enterprise in statistical work in the postal industry" issued by the State Post Bureau of the people's Republic of China, and "China Logistics Global Forum: China logistics model (enterprise)" issued by the Ministry of Transport of the People's Republic of China, "China quality integrity enterprise" issued by China Entry-Exit Inspection & Quarantine Association, etc..  The opponent's trademark and trade name "DHL" have high popularity and influence in China and around the world.

    The opposed mark is exactly the same as the opponent's trademark and trade name, and its registration and use can easily mislead the consumer to the source of goods; the opposed party also applied for trademark “3acf02a540f74f77065c7307aa23f0a.png ” (No. 34055300) over services "transportation; sea transportation; automobile transportation; air transportation, etc." in Class 39 which is the opponent’s main service category, and filed the domain name "dhlfast.com."  The opposed party clearly knew the opponent's trademark and business scope and intends to take advantage of the brand value of "DHL."  The behavior of the opposed party not only damages the legitimate interests of the opponent and improperly occupies trademark resources, but also has an impact on the trademark registration order and damages the social interests.

    The CNIPA ruled that the evidence submitted by the opponent showed that the trademarks cited by the opponent had certain originality and distinctiveness, and obtained certain reputation among the relevant public through its long-term use and extensive publicity.  The opposed mark is similar to the opponent’s cited marks in terms of composing letters, design and overall appearance.  In addition to this trademark, the opposed party has also applied for the registration of several trademarks similar to the cited marks of the opponent, which the opposed party has not made a reasonable explanation.  The registration and use of the opposed mark will easily cause misunderstanding of consumers to the source of goods.  Therefore, the application of the opposed mark by the opposed party has the subjective intention of unfair competition by using the trademark reputation of others, which violates the principle of good faith.  In accordance of Articles 30 and 35 of the trademark law, the opposed mark shall not be registered.

    The designated services of the opposed mark are "textile finishing; wood cutting and processing; paper processing, etc." in Class 40, which are not similar to those of the cited marks.  The trademark attorney selected marks in Classes 16, 20, 39 from the opponent’s registered marks which including goods/services "paper; paperboard" "boxes; transport pallets; transport and packaging boxes," and "transportation and storage" as the cited marks, and argued in details the connection between the designated services of the opposed mark and the designated goods/services of the cited marks.  Finally, the CNIPA believes that "the registration and use of the opposed mark will easily to cause confusion among consumers to the source of goods" and reject the registration of the opposed mark in accordance with Article 30 of the trademark law.

    In addition, the trademark attorney also listed the malicious acts of the opposed party from many aspects, which confirmed that the opposed party intended to take advantage of the "DHL" brand value.  Finally, the CNIPA also found that the opposed party's such acts violated the principle of good faith.

    In this case, the designated services of the opponent’s mark do not cover the designated services of the opposed mark.  However, the opponent’s cited marks have certain originality and distinctiveness, and obtained reputation among the relevant public after its long-term use and extensive publicity.  In addition, the trademark attorney argued in details the connection of goods / services and the bad faith of the opposed party, and finally obtained the support of the CNIPA.

    In the process of opposition/invalidation, if the goods / services specified in the trademarks are not similar according to the Chinese Classification of Goods and Services, the trademark containing the goods / services with high relevance among the existing trademarks of the opponent shall be selected as the prior right, and the reasons for the non approval / invalidation of the opposed mark / disputed mark should be argued comprehensively.  We believe that the CNIPA will make a fair decision on the case on the basis of full understanding of the facts of the case and under the guarantee of the China Trademark Law System.


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