Abstract

We, Kangxin Partners, P.C., filed an invalidation action against the trademark, LANXESS in Class 9 (“the disputed mark”) on behalf of LANXESS AG (“the client”) on July 11, 2023.  The National Intellectual Property Administration, PRC (“CNIPA”) examined the case and decided to invalidate the registration of the disputed mark.

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 "LANXESS" in Class 1 in mainland, China, which is registered and managed by the subsidiary, LANXESS TRADEMARK GMBH & CO.KG. Through the client's long-term use and promotion, their mark "LANXESS" has obtained high reputation among the relevant public in mainland China, the mark also has formed corresponding relationship with the client. The disputed mark is an obvious copy of the client’s mark "LANXESS" in Class 1 and the disputed party also filed several marks that are similar to others' marks with certain reputation, such as "BHP BILLITON", "今日头条" and "THE SORTING HAT".  Upon communication with client, we were entrusted to file invalidation action against this trademark.

The comparison of the marks is as below:

Key Issues

In the invalidation action, we mainly argued that:

1) The disputed party registered the disputed mark not for true use purpose and with obvious bad faith by coping the cited mark, in violation of the principle of good faith;

2) The CNIPA has recognized the disputed party's bad faith in filing marks in other opposition / invalidation actions.

3)  The disputed mark is a copy of the client's registered well-known cited mark, its registration and use may easily mislead the relevant public and harm the client's interests;

On August 10, 2024, the CNIPA issued the decision: the evidence submitted by the applicant is insufficient to prove that the cited mark has been well-known to the relevant public on the designated goods before the application date of the disputed mark, the designated goods of the disputed mark and the claimed well-known goods of the cited mark have obvious differences in terms of consumers and functional use purposes, it's hard to affirm that the registration and use of the disputed mark may easily mislead the relevant public or harm the applicant's rights and interests, thus, the registration of the disputed mark didn't constitute the circumstance stipulated by Article 13.3 of China Trademark Law. But the disputed mark is same as the applicant's cited mark with strong distinctiveness, the disputed party didn't make reasonable explanation on the design inspiration of disputed mark, it's difficult to regard it as a coincidence. Moreover, according to the facts found, as an individual, the disputed party applied for more than 300 trademarks in a multitude of classes such as 9, 11, 14, 16, 18, 22, 25, 28, 35, 36, 37, 38, 39, 41, 42, 43, 44, 45, the disputed party didn't provide evidence or explanation for the registration and use of these trademarks. The aforementioned actions of the disputed party don't possess the legitimacy expected of trademark registration and obviously exceed the normal production and operation needs, disrupting the normal management order of trademark registration and harming the fair competition of the market order, violating the principle of public order and good morals. The disputed trademark has constituted the circumstance stipulated by Article 44.1 of China 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. The similarity analysis between both sides' marks, reputation evidence of the client's mark and the prior opposition or invalidation decisions where the CNIPA recognized the other party's bad faith in filing marks are very helpful to support our claim of the other party's bad faith in filing marks.

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 and sweeping the bad-faith registrations away as early as possible.

We now offer two options of communication, i.e. traditional email instruction and our Kangxin IP Platform (https://eservice.kangxin.com), which both provide the same substantive services by our trademark attorneys, with the only difference in instruction manners.  Since our platform is more efficient by automatic docketing, standard goods/services recommendation and automatic generation of POA as well as other smart tools, it is treated as a fast track, and we offer more favorable quotation for all services via our platform as compared with our standard fee charges.