Abstract

We, Kangxin Partners, P.C., filed an opposition action against the trademark, TCHEONGYM (No. 62916440 in Class 28) (“the opposed mark”) on behalf of TECHNOGYM S.P.A. (“client”) on September 9, 2022.  The National Intellectual Property Administration, PRC (“CNIPA”) examined the case and decided to reject the opposed mark for registration.

Background

TECHNOGYM S.P.A. was founded in 1983 and is 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 their main 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 opposed mark is confusingly similar with the client’s marks for “TECHNOGYM”.  Upon communication with client, we were entrusted to file opposition action against this trademark.

The comparison of the marks is as below:

Key Issues

In the opposition, we mainly argued that:

1)     The opposed mark is similar to the cited marks in terms of the composed letters, overall appearance, and meaning.  Their goods are similar to or highly connected with each other.  Based on the high reputation of the cited marks in mainland China, the registration and use of the opposed mark is more likely to cause confusion and misleading among relevant public;

2)     The opposed mark was filed in obvious bad faith by imitating the cited marks, which violates the principle of good faith.

On June 14, 2023, the CNIPA issued the decision: The opposed mark and the client's TECHNOGYM marks constitute “similar marks over similar goods”, and coexistence of the marks will easily cause confusion and misunderstanding amongst the consumers.  The evidence submitted by the client can prove that the client’s mark “TECHNOGYM” has acquired certain reputation amongst the consumers through publicity.  The opposed party did not give a reasonable explanation for the creation of the opposed mark.  Thus, the opposed party filed the mark with copying and imitating other’s marks deliberately, which will not only cause misunderstanding amongst consumers over the source of goods, but also damage the market order of fair competition and violate principle of good faith.  Therefore, the opposed mark should be rejected for registration according to Articles 7 and 30 of Chinese Trademark Law.

Inspiration of the Case

It is obvious that the parties’ marks are similar, because the composed letters of the marks are the same with slight difference in sequence of several middle letters.  The key issue of this case is that only part of the designated goods of the opposed mark, namely, goods in subclasses 2505 and 2507, are similar to those of the client’s marks.  Over the remaining dissimilar goods, we mainly argued the high reputation of the client’ mark, certain connection between the parties’ goods as well as the bad-faith of the opposed party.

The CNIPA supported such claims and decided not to approve the opposed mark for registration for all of the goods, mainly due to that the opposed party has clear bad-faith intention in filing other's brands and the CNIPA's increased efforts to crack down on malicious registrations, which will provide greater protection for the rights of genuine trademark owners.  It also gives us a revelation that we should thoroughly investigate the other party's lack of good faith in the opposition/invalidation actions with supporting evidence.

On the other hand, 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.  It is important for the brand owners to make early preparations for trademark protection before entering the Chinese market, file trademark applications for registration with relatively broader protection scope, conduct market monitoring and take action against the bad-faith registration in time to protect their rights and avoid any possible confusion to be caused in the market.

We are always available to offer our advice for all of our clients.  We also aim to assist our clients in avoiding the pain of having their trademarks taken away by providing professional help.