Abstract

We, Kangxin Partners, P.C., filed an opposition action against the trademark, (No.45050862 in Class 35) (“the opposed mark”) on behalf of OAMC S.R.L. (“Client”) on January 12, 2021.  The National Intellectual Property Administration, PRC (“CNIPA”) examined the case and decided to reject the opposed mark for registration.

Background

OAMC S.R.L. is the owner of a world-renowned clothing brand “OAMC.”  The client registered the trademarks “” and “” in China through Madrid system over different goods.  Upon communication with client, we were entrusted to file opposition against the trademark.

The comparison of the marks is as below:

Key Issues

In the opposition, we mainly argued the high reputation of our client's mark and the obvious bad-faith of the opposed mark. 

On November 8, 2021, the CNIPA issued the decision: The opposed mark “ ” is identical to the opponent’s cited marks with distinctiveness.  According to the evidence submitted by the opponent, the CNIPA founds that except the opposed mark in this case, the opposed party also applied for number of trademarks, which are same or similar to others’ marks with strong distinctiveness, and some of these marks have been opposed by relevant interested parties or rejected by the CNIPA.  The opposed party did not give any reasonable explanation.  Therefore, the CNIPA holds that the opposed party have the intention of imitating and copying others’ marks, which disturbs the normal order of trademark registration, and violates the legislative spirit of the PRC Trademark Law on prohibiting trademark registration by deception or other improper means.  Therefore, the opposed mark is in violation of Articles 30 and 35 of the PRC Trademark Law.

Inspiration of the Case

From this decision, we can learn that now the CNIPA makes every effort to crack down the malicious applications and registrations, which will give more protection on the real trademark owners.  Chinese market becomes more and more important and popular in recent years, and more and more brands are paying high attention to the Chinese market.  We have seen many foreign brands which have become popular and enjoy certain reputation in foreign counties and China but have not registered the trademark in China yet; instead their marks were registered by the third parties.  When they want to register trademarks in China, they have to spend much efforts, energy, cost and time to clean up the bad-faith registrations. 

Thus, we would recommend the owners filing their own trademark applications in China timely if they have the plan to open up the Chinese market.  It is important to register the mark in China over relevant goods and services to both 1) ensure others do not register or use the same or similar mark on their own products and 2) avoid possible infringement claims against the real owner (if the owner plans to use the mark in China). Vhina is a “first-to-file” country, meaning that generally, the first person to file a trademark application will have superior rights over that trademark.  So we recommend the applicant who wants to do business in China apply for their own mark as early as possible.    

We now offer two options of communication, i.e. traditional email instruction and our Kangxin IP Platform (https://eservice.kangxin.com), which both provide the same substantive services by our trademark attorneys, with the only difference in instruction manners.  Since our platform is more efficient by automatic docketing, standard goods/services recommendation and automatic generation of POA as well as other smart tools, it is treated as a fast track, and we offer more favorable quotation for all services via our platform as compared with our standard fee charges.