Abstract

We, Kangxin Partners, P.C., filed an opposition action against the trademark, REOLUBE (No. 67309899 in Class 2) (“the opposed mark”) on behalf of LANXESS AG (“the client”) on March 20, 2023.  The National Intellectual Property Administration, PRC (“CNIPA”) examined the case and decided to reject the opposed mark for registration.

Background

LANXESS AG is a leading specialty chemical company based in Germany, with a rich history dating back to 1863. It has a global presence with over 50 subsidiaries and joint ventures in various countries around the world. The client's global footprint allows it to serve customers in diverse industries, including automotive, construction, electronics and agriculture, with high-quality specialty chemicals and advanced materials. The client is committed to developing sustainable solutions that help to address global challenges such as climate change, resource scarcity, and urbanization. With a strong focus on innovation, sustainability, and customer satisfaction, the client continues to drive forward as a leading player in the global specialty chemicals market.

The client has the trademark "REOLUBE 维奥流" in Class 1 in mainland, China, which is registered and managed by the subsidiary, LANXESS SWITZERLAND GMBH. Through the client's long-term use and promotion, their marks "REOLUBE 维奥流" and "REOLUBE" have obtained certain reputation among the relevant public in mainland China, the marks also have formed corresponding relationship with the client. The opposed mark is the English part of our client’s registered mark "REOLUBE 维奥流" and the opposed party also filed several marks that are similar to the client's other marks with high reputation, such as "LANXESS", "朗盛" and "科聚亚".  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 mark, and their goods are highly connected with each other, the registration and use of the opposed mark over similar or similar goods is more likely to cause confusion and misleading among relevant public;

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

3)   The CNIPA has recognized the opposed party's bad faith in filing marks in other opposition actions.

On January 12, 2024, the CNIPA issued the decision: the designated goods of the opposed mark and cited mark have certain differences in functions and use purposes, thus, the marks of both sides do not constitute "similar marks over similar goods".  But according to the evidence submitted by the opponent and the ascertained fact, except the opposed mark, the opposed party also filed many marks that are same or similar to others' marks, the opposed party didn't make reasonable explanation on this.  In combination with the fact that the opposed mark is similar to the cited mark, the CNIPA holds that the opposed party has subjective malice in copying and imitating others' trademarks. Such action disrupts the market economy order of fair competition and violates the legislative spirit of the Trademark Law on prohibiting trademark registration by deceptive or other illegal means.  Therefore, the opposed mark should be rejected for registration according to Article 30 of Chinese Trademark Law.

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’ rights.  Even though the client has no earlier right over same or similar goods/services, we may search deep into the other party's bad faith with supporting evidence in the opposition / invalidation actions so the CNIPA can rule in our side.

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.  The brand owners should make early preparations for trademark protection before entering the Chinese market.  We have seen many foreign brands which only cover their key goods / services on sale when filing trademark applications, which means that their trademark only has limited protection scope.  To protect the distinctiveness of the brand in the market and reduce potential risk of confusion and misleading to be caused to the consumers, the true owners of the brands have to spend much efforts, energy, costs and time to clean up the bad-faith registrations, and when they want to enlarge the business scope and register trademarks over additional goods / services in China, the bad-faith registrations will bar their applications. 

Thus, we recommend the brand owners filing defensive applications over related goods / services in China timely to 1) bar the subsequent bad-faith applications filed by third parties; 2) provide assurance for future business expansion; and 3) avoid possible infringement claims against the real owner (if the owner plans to use the mark over additional goods / services 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 filing defensive applications over related goods / services as early as possible.