Lanxess Trademark Opposition Case
date: 2017-12-27

Background

    Our client is a world famous company of special chemical products and owns the mark No. 4051564 for “朗盛”.  The client was of the opinion that the coexistence of the mark No. 16891507 for “朗盛” and the client’s mark may cause confusion among consumers and damage the client’s interests.  Upon communication with client, we were entrusted to file a trademark opposition

Process

We filed opposition application against the opposed mark on May 26, 2015.  In the opposition, we mainly argued that:

1. The opposed mark and the cited mark constitute identical marks in respect of similar designated goods, the co-existence of these marks will cause confusion among relevant consumers.  Thus, according to Aricle 30 of the Trademark Law, the opposed mark shall not be approved for registration;

2. Based on the high reputation of the cited mark, the registration and use of the opposed mark would be easier to cause confusion among relevant consumers;

3. The registration of the opposed mark infringes the prior trade name right of the opponent.  According to Article 32 of Chinese Trademark Law, the opposed mark shall not be registered;

4. The registration of the opposed mark bears the nature of fraud and is inclined to mislead customers on the quality of goods, etc, violating Article 10.1.7 of Chinese Trademark Law;

5. The registration of the opposed mark violates the Principle of Good Faith, the registration and use of the opposed mark may cause negative influence. In line with Articles 7 and 10.1.8 of the Chinese Trademark Law, the opposed mark shall not be approved for registration.

    On July 19, 2017, the TMO issued the decision: The submitted evidence can prove that the opponent’s mark “朗盛” gained a high reputation in specialized chemical industry before the opposed mark’s filing date.  The trade name of the opponent and its Chinese company “朗盛” also enjoy a high reputation amongst the relevant public through long-time use.  The designated goods, “Fertilizer, etc.” of the opposed mark have strong connection with the goods, “industrial chemical; agricultural chemical except germicides, herbicides, preparations for destroying noxious plants, pesticides, parasiticides” of the opponent.  Considering the strong distinctiveness of the opponent’s mark, registration and use of the opposed mark will mislead the relevant public concerning the origin of goods, and then damage the interests of the opponent.  Thus, registration of the opposed mark violates the trade name right of the opponent.

Key features

    In this case, though the opposed mark is identical with the clients cited mark, their designated goods do not fall in the same subclass. We also claimed the opposed mark and the cited mark constitute identical marks in respect of similar designated goods, but such argument was not supported finally.  However, the claim based on Article 32 of Trademark Law, that the opponent owns trade name right, the trade name enjoys a high reputation and registration and use of the opposed mark will mislead the relevant public, was supported by CTMO and the opposed mark marks were rejected for registrations.

The earlier rights in Article 32 of Trademark Law includes trade name right, the applied situation of this Article is as follows:

1)      The recording, use date of the trade name shall before the filling date of the disputed mark;

2)      The trade name gained certain reputation among related public in China;

3)      The registration and use of the disputed mark will easily cause confusion among related public and damage the benefit of prior trade name right owner.

    Generally, the requirement 1 must be satisfied, requirement 2 is determined by the time of use, scope of use of the trade name in China as well as the promotion of the trade name, requirement 3 is determined by the similarity of the designated goods / services of two parties marks, as well as the possibilities that the co-existence of the marks will cause confusion among related public.  In this case, the trade name of the opponent has long term, wide use and promotion in China, which satisfied requirement 2, the designated goods “Fertilizer, etc.” of the opposed mark and the goods “industrial chemical” of the opponent’s industry are likely to cause confusion among related pubic which satisfied requirement 3, the CTMO thus supported our argument and rejected the opposed mark “朗盛” for registration.  We can fully follow the applied situation of trade name right in future similar opposition / invalidation cases.

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