Abstract

We, Kangxin Partners, P.C., filed an invalidation action against the trademark, 泰诺健 (No. 27275924 in Class 35) (“the disputed mark”) on behalf of TECHNOGYM S.P.A. (“Client”) on December 17, 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:

1)  The disputed mark is “similar marks over similar services” with compared to cited marks, in violation of Article 30 of the PRC Trademark Law;

2)  “泰诺健” and “TECHNOGYM” has formed corresponding relationship with each other.  Based on the high reputation of the cited marks, the registration and use of the disputed mark over similar same or similar services will easily cause confusion among relevant public;

3)   The registration of the v mark is deceptive, it will mislead the consumers on the origin of the services;

4)   The disputed mark was filed in bad-faith, which violates the principle of good faith.  

On October 31, 2022, the CNIPA issued the decision:  the submitted evidence could prove that “泰诺健” and “TECHNOGYM” has formed corresponding relationship with each other., thus the disputed mark, 泰诺健and the cited mark for “TECHNOGYM” under IR No. 645891 in Class 35 have constituted "similar marks over similar services", and coexistence of the marks may cause confusion and misleading to consumers.  In addition, According to ascertained fact, except the disputed mark, the disputed party also filed many marks, like “莎士比亚, 麦当娜, 迪卡侬, 汉庭, 伊丽莎白, 阿迪达斯, and etc.,” in Classes 21, 28 and 41, all of them are same or similar to others' brands or names.  Therefore, the CNIPA holds that the disputed party has intention to take advantage of others' reputation to engage in unfair competition or seek illegitimate interests.  Such action violates the principle of good faith, disturbs the normal order of trademark registration, as well as damages the fair market competition order.  Therefore, the disputed mark should be invalidated in violation of Articles 30 and 44.1 of Chinese Trademark Law.

Key Point of the Case

The key issue of this case is that 1）“泰诺健” and “TECHNOGYM” has formed corresponding relationship with each other; 2) the disputed mark is a “similar mark” with the cited mark; 3) the services of the disputed mark are similar to those of the opponent’s cited mark; and 4) the disputed mark was filed in bad-faith.

With respect to issues 1-3, our collected  evidence could prove that “泰诺健” and “TECHNOGYM” has formed corresponding relationship with each other and enjoyed certain reputation in the Chinese market over the sports fitness equipment.  The disputed mark is the same with the client's corresponding Chinese character mark “泰诺健” for “TECHNOGYM” and the services are all similar to those of the cited mark, TECHNOGYM in accordance with the Chinese Classification of Goods and Services.  Thus the marks are considered as “similar marks over similar services” and the coexistence of the marks will easily cause confusion among relevant public.

With respect to issue 4, the disputed party filed many others' famous brands without reasonable explanation, thus the CNIPA considers the disputed party has clear bad-faith intention in filing others' trademarks.