"IVECO" and its corresponding Chinese character mark "依维柯" are the main brands of IVECO S.P.A. ("IVECO" hereinafter).  IVECO Group is a global automotive leader active in the commercial & specialty vehicles, power train, and related financial services arenas.  It enjoys certain reputation in China and all over the world.

The mark "IVECO" and its corresponding Chinese character mark "依维柯" are copied by third parties in China many times, IVECO prevailed in many cases and the CNIPA also recognized the certain reputation of the marks "IVECO" and "依维柯" in China in many cases.  The case discussed in this article is about the use of Article 7 of China Trademark Law in an opposition action against the trademark "依维柯."

Article 7 of China Trademark Law states that when applying for the registration of a trademark and using a trademark, the principle of good faith shall be followed.

In Guidelines for Trademark Examination and Trial, it explained that the principle of good faith is one of the fundamental principles of civil law.  In the application for trademark registration and use, the principle of good faith shall be implemented.  The parties and their agents should consciously avoid the public interest, the trademark rights or other prior rights of others that are already known or they should be aware of, and not attempt to obtain registration in a way that harms the public interest or the rights of others.

In this case, IVECO filed an opposition action against the mark "依维柯" No. 52684357 in Class 11 in the name of an individual, Zhou Jinbao.  This mark is identical with IVECO's Chinese character mark "依维柯", but its designated goods "cooking utensils, electric, etc." are not similar to the designated goods "automobiles, etc." of IVECO's marks according to the Chinese Classification of Goods and Services.  After analysis of the case, we mainly claimed that:

1) The opposed mark is a “similar mark over similar goods/services” compared with the cited marks, in violation of Chinese Trademark Law, Article 30;

2) Based on the high reputation of IVECO and the cited marks, registration of the opposed mark will easily cause confusion and misleading to the relevant public;

3) Registration of the opposed mark is not for the real business purpose, and the opposed party filed the opposed mark through improper means, which violate the principle of good faith and will cause negative social influence.

To support the third argument, the decision of review of non-use cancellation to cancel the mark No. 4570810 in the name of same party was submitted.  There is also information showing that the opposed party is selling the mark on some platforms to gain benefits, and this party copied some others' famous brands as well.

Finally, the CNIPA finally decides not to approve the registration of the opposed mark on the ground that the opposed party has intention to copy or imitate others' marks in bad faith and the opposed party’s behaviors violate the principle of good faith and disrupt normal order of fair competition - the opposed party filed more than 300 trademarks, including “飞利浦, 史密斯A.O.SMITH, 三星SAMSUNG, 百度” and many marks are confusingly similar to some famous trademarks.  The opposed party did not provide a reasonable explanation for this.

In this case, thanks to the support of Studio Torta S.p.A. (the Italian trademark agent of IVECO, an IP boutique firm specialized in procuring patent, trademark, design and plant variety rights in Europe, Italy and worldwide to defend the clients’ investments in innovation and branding) to provide sufficient evidence to show that IVECO's marks have strong distinctiveness and originality, and enjoy certain reputation among the relevant public after long-term use and wide promotion in mainland China.  The opposed mark is identical with IVECO's marks which is hard to be considered as a coincident.  In such situation, Articles 7 of China Trademark Law is applicable to protect the client's trademark rights and defend bad faith filings.  The CNIPA made a fair decision for the case on the basis of full understanding of the facts of the case which shows the resolution of the CNIPA in combating bad faith trademark filings.  We also call for a stop of copying others' brands in bad faith.