Abstract

We, Kangxin Partners, P.C., filed 13 invalidation actions against the trademark, Royal DSM (“the disputed marks”) in various classes on behalf of DSM IP ASSETS B.V. (“the Client”) on June 28, 2022.  The National Intellectual Property Administration, PRC (“the CNIPA”) examined the cases and decided to invalidate all the 13 disputed marks for registration.

Background

Koninklijke DSM N.V. (“DSM”) was founded in 1902, it has transformed during its 150+ year history into today'ss health, nutrition & bioscience global leader.  The Dutch-Swiss company specializes in nutritional ingredients for food and feed with proven world-leading bioscience capabilities and an international network of high-quality manufacturing sites that underpin a business model of global products, local solutions and personalization and precision.  Now, DSM and Firmenich (the world's largest privately-owned fragrance and taste company) merged as DSM-Firmenich, DSM became a part of DSM-Firmenich to establish the leading creation and innovation partner in nutrition, beauty and well-being.

The client has the trademark registrations for "DSM" in mainland, China, covering different goods and services, which are registered and managed by the subsidiary, DSM IP ASSETS B.V.  After long-term use and promotion, the mark "DSM" enjoys high reputation amongst the relevant public in mainland China.   The disputed party filed 43 trademark applications for "Royal DSM" over different goods and service in different classes, which are obviously the copies and imitations of the client's mark.  We firstly were entrusted to file 43 trademark oppositions against the 43 trademark applications, and as a result, we won 30-trademark oppositions, the CNIPA ruled in our favor by affirming the claims that the opposed mark and the client's prior registered mark are similar marks over similar goods/service.  As for the rest of 13 trademark oppositions, the CNIPA did not rule in our favor or ruled in our favor over partial goods/service.  We strongly recommended the client filing trademark invalidation applications after the marks matured into registration, and finally we achieved a very good result, namely the CNIPA invalidated all the 13 trademark registrations by affirming the disputed party's bad faith. 

The comparison of the marks is as below:

Key Issues

In the invalidation, regarding the "bad faith" argument, we mainly argued that:

1)  The disputed party filed/registered many marks “Royal DSM” that are identical or similar to the client’s English mark "DSM" that enjoy certain reputation and strong distinctiveness;

2)  The disputed party filed many marks "帝斯曼" that are identical with the client’s Chinese mark “帝斯曼” that enjoy certain reputation and strong distinctiveness;

3)  The previous legal representative of the disputed party “Yu Shang” also rushed-filed/registered the client’s marks;

4)  Other important facts further prove that disputed mark was registered in improper ways;

A. The judicial decision once affirmed that the disputed party infringed the  trademark right of client’s mark “DSM” ;

B. The previous legal representative of the disputed party “Yu Shang” filed the opposition against the client’s mark in bad faith, which bars the registration of the client’s mark;

On July 10, 2023, the CNIPA made the decision: in this case, the client's "帝斯曼" and "DSM" trademarks are non-common combinations of Chinese characters or letters, and the disputed trademark completely contains "DSM" trademark of the client, making its registration difficult to be considered a coincidence.  In addition, at the time of this case, the disputed party has applied for registration of sixty trademarks in classes 1-45, including 7 "帝斯曼" and 45 "Royal DSM" trademarks which are similar to the prior "帝斯曼" and "DSM" trademarks.  The disputed party has not provided evidence to prove the genuine use intention of the trademarks, nor has it provided a reasonable origin for its trademarks, making its registration behavior unjustified.  Therefore, the CNIPA believes that the disputed party's above behavior constitutes intentional duplication, plagiarism, and imitation of others' trademarks, targeting a specific trademark with certain popularity or strong distinctiveness.  This behavior not only leads to the public's confusion about the source of goods or services, but also disrupts the normal management order of trademark registration and damages the market order of fair competition. Therefore, it should be determined that the registration of the disputed trademark has constituted the situation prohibited by Article 40, Paragraph 1 of the Trademark Law, which prohibits "obtaining registration by other unfair means."

Comments

Ø  The Difficulty of the case

As for the rest of 13 trademark oppositions that the CNIPA did not rule in our favor or partially ruled in our favor, the CNIPA did not support the "similar mark over similar goods/service" argument during the trademark opposition.  In accordance with the subclass principle adopted by the CNIPA, we did not see a good chance of success at this point even at invalidation stage.  Therefore, we are of opinion that the invalidation actions would mainly based on the "bad faith" argument. 

However, as for the claim of "bad faith", there are some concerns: Firstly, during the trademark opposition stage, the CNIPA did not determine the disputed party's bad faith; Secondly, the other party only registered the client's trademark, not a large number of others; Thirdly, the number of trademarks applied for by the other party is not particularly large.

After reviewing and estimating the cases, we still think it is worthy taking the chance to file trademark invalidation actions and we recommended the client doing so to have a try.  As a result, we obtained a satisfactory result.

Ø  Inspiration of the Case

Based on the cases, we would like to share following:

A. Understand the current review trends and make good use of the follow-up procedures;

The CNIPA is cracking down on malicious trademark registrations/applications. This move comes as a response to the increasing number of individuals and companies attempting to register trademarks in bad faith, with the intention of profiting off of well-established brands.  This will make the trademark cases examination considering the bad faith as an important factor.

In addition, compared with the trademark opposition procedure, the trademark invalidation will take more factors into account when examine a case, such as the originality and distinctiveness of the cited mark, the cited mark's reputation, the bad faith of the other party, etc.

Therefore, even if there is a not good result at the trademark opposition procedure, based on the review trend and the difference between two procedures, it is worthy proceeding with follow-up procedures to protect your right.

B. Prove the bad faith by accumulated evidence and from multiple perspectives

As we analyzed before, one of the difficulties in this case is the disputed party only registered the client's trademark, not a large number of others.  In the invalidation, we pointed out their previous legal representative once rush-filed/registered the client's mark.  Furthermore, we submitted an administrative penalty decisions and administrative judgments to prove the illegal act of the disputed party, all of which we think will affect the examination over the deputed party's bad faith.

In other words, although the submitted materials are not directly related to the case, they are likely to influence the outcome of the case from multiple perspectives.  Therefore, it would be helpful to collect facts and evidence from multiple angles around the main claims of the case.