Abstract

We, Kangxin Partners, P.C., on behalf of client, Zoom Video Communications, Inc., Video Communication giant, filed an opposition action against the trademark ID ZOOM (No. 56531812 in Class 25) on February 7, 2022, and the National Intellectual Property Administration, PRC (“CNIPA”) subsequently examined the case and decided to reject the opposed mark for registration.

Here, we explore how the good faith principle (Article 7 of China Trademark Law), as supported by CNIPA, can be applied in opposition cases to aid legitimate trademark owners in blocking bad faith marks in China.

Summary of the case

In this opposition case, we mainly argued that:

1) The opposed party filed the marks including the opposed mark is not for use intention, in violation of principle of good faith of Article 7 as well as Articles 4 and 44.1. The attorneys gathered evidence and conducted a thorough analysis of the opposed party's bad faith from the business scope, size, number of trademarks filed or registered, list of copied marks as well as introduction of the copied marks to prove the opposed party's bad faith in trademark filing.

2) The opposed mark “ID ZOOM” in Class 25 and the client's mark, “ZOOM” in Class 35 constitute "similar mark over similar goods/services" in violation of Article 30 of China Trademark Law.

3) The opposed mark infringes the client's prior trade name right, in violation of Article 32 of China Trademark Law.

4) Given the high reputation of the client and their marks, use and registration of the opposed mark may easily lead to confusion and misunderstanding amongst relevant consumers regarding the resource and quality of the goods.

The opposition decision issued by CNIPA on March 5, 2023 confirming that the client, a technology company providing teleconference services, has used their trademark and trade name "ZOOM" before the filing date of the opposed mark. The opposed mark entirely contains the mark "ZOOM" which has been prior registered and used, both of the marks are similar in meaning.  Consequently, both parties' marks were considered similar.

The CNIPA concluded that the opposed party filed over a thousand trademarks which were substantially identical or similar to marks that were previously registered and/or used by other parties, without providing any reasonable explanation. Considering the similarities of the opposed mark and the client’s mark, CNIPA believed that opposed party's trademark filing behavior demonstrated an obvious bad faith, as they are attempting to copy and imitate other trademarks with the purpose of misleading consumers about the source of goods and disrupting fair market competition. In light of Articles 7, 30 and 35 of China Trademark Law, CNIPA ruled that registration for the opposed mark “ZOOM” should not be approved.

Comments on this case

The principle of good faith stipulated in Article 7 shall be upheld in the application for trademark registration and in the use of trademarks.

Article 7 requires applicants to exercise reasonable care and avoidance obligations when applying for new trademark applications, that is, the new trademark applications should neither damage any known nor established trademarks rights or any other prior rights, nor should they attempt to obtain trademark registration in a manner that would be detrimental to public interests or the rights of others. Article 7 is a Miscellaneous Provision invoked to uphold the rights of real trademark owners in cases where other provisions may not address the situation, but the CNIPA considers that the opposed mark should be rejected.

In this case, the client neither has the prior trademark right in the specific class, namely Class 25, nor have they used it commercially over the goods within the said class, which put the client in a negative position when it comes to opposition proceedings. The CNIPA could not find other proper Articles to support the client's claims, in order to prevent malicious registration of trademarks and protect the real trademark owners, the CNIPA relies on Article 7 as legal ground to reject the opposed mark.

If the real trademark owners face the same situation that they do not have the prior trademark right in specific class, nor does he/she use it commercially over the goods/services within the class, in order to successfully oppose the opposed mark, we suggest filing opposition based on the following grounds:

1. Strong distinctiveness of the marks

Generally speaking, a trademark with high originality bears strong distinctiveness, and the strong distinctiveness of the real trademark owners’ marks will be helpful to convince the examiner that the opposed mark is not created by the opposed party if the opposed mark is highly similar to the real trademark owners’ marks and coexistence of both parties’ marks are likely to lead to misunderstanding amongst the public.

2. High reputation of the real trademark owners and their marks

The high reputation of trademark owners and their marks will assist the examiner to conclude that the opposed mark and the real trademark owner's marks are similar, and that the registration and use of the opposed mark would likely lead confusion and misunderstandings among relevant public over the source and quality of the goods. Therefore, it is recommended to illustrate the high reputation of the real trademark owners and their marks in the opposition pleading, with supporting evidence, such as contracts, invoices, pictures, press release, orders, packing lists, customs declarations, etc. reflecting the sales and publications of the trademarks and goods.

3. Detailed analysis of the opposed party’s bad faith

Evidence to prove the opposed party's malicious intention will be helpful to prove the opposed party’s bad faith, including a comprehensive overview of opposed party’s business, size, number of marks filed or registered, a list of copied marks, and explanation of the copied marks.

4. Prior precedents

Prior similar precedents play a significant role when examining the opposition case in question. The CNIPA usually takes these precedents into consideration in which the opposed party’s bad faith in trademark filing has been confirmed by the relevant authorities.  If the opposed party has been identified as a bad faith applicant in other trademark cases, it is likely the CNIPA will directly reject the opposed mark for registration in question.