Abstract

We, Kangxin Partners, P.C., filed an invalidation action against the trademark, 泰诺健 (No. 31806751 in Class 43) (“the disputed mark”) on behalf of TECHNOGYM S.P.A. (“Client”) on November 12, 2021.  The National Intellectual Property Administration, PRC (“CNIPA”) examined the case and decided to invalidate the disputed mark for registration.

Background

TECHNOGYM S.P.A. was founded in 1983 and is currently a leading company in the field of fitness equipment and fitness services.  It has 14 branches in Europe, the United States, and China, and its products are exported to more than 100 countries.  The client has been the official fitness equipment supplier of the Olympic Games for eight consecutive times, including the 2000 Sydney Olympic Games, the 2004 Athens Olympic Games, the 2006 Turin Olympic Games, the 2008 Beijing Olympic Games, the 2012 London Olympic Games, the 2016 Rio Olympic Games, the 2018 Pyeongchang Winter Olympic Games and 2020 Tokyo Olympic Games.  The client registered the trademarks “泰诺健” and “TECHNOGYM” in mainland, China over different goods and services.  After more than 40 years hard works, TECHNOGYM made a great performance around the world.  The client and their marks “泰诺健” and “TECHNOGYM” enjoy high reputation among relevant public, and the marks “泰诺健” and “TECHNOGYM” also has formed corresponding relationship with each other.  The client was of the opinion that the disputed mark is a “similar mark over similar goods/services” compare with the client’s marks for “泰诺健” and “TECHNOGYM”.  Upon communication with client, we were entrusted to file invalidation against this trademark.

The comparison of the marks is as below:

Key Issues

In the invalidation, we mainly argued that: “泰诺健” and “TECHNOGYM” has formed corresponding relationship with each other and enjoyed high reputation, the disputed mark was filed in bad-faith with prejudice to the client's prior trademark.

On October 28, 2022, the CNIPA issued the decision: The disputed party imitated and copied others' marks with certain reputation, and the numbers are more than 80, over the goods or services in many classes.  The disputed party did not make a reasonable explanation for the subject case and also did not respond to this invalidation action.  The CNIPA holds that the disputed party's action in filing these marks is not for the purpose of production and management, but for the intention of hoarding trademarks without the rationality or legitimacy.  This action not only damages the rights of other market entities, but also disturbs the normal order of trademark registration, occupies public resources, and damages the fair market competition order, in violation of the Article 44.1 of China Trademark Law.  Thus, the disputed mark should be invalidated.  The CNIPA also supported the arguments that the submitted evidence could prove that the cited marks enjoy certain reputation in the field of sports fitness equipment.

Inspiration of the Case

From this decision, we can learn that the CNIPA now makes major effort to crack down the malicious 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, costs 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).  China 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.    

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