In a Chinese household, the kitchen holds an important place – the culture of food and cooking is rich, and with the continuously evolving tastes of the Chinese population, more new kitchen tools are entering the market. Homeland Housewares, LLC is a company engaged in developing and selling household and kitchen products. It has acquired high reputation and influence among Chinese consumers because of its high-quality products. However, as Homeland gains in popularity, its marks become targets of trademark squatters. Homeland initiated a trademark opposition action against a published mark to fight for its rights.
Kangxin Partners, P.C., acting on behalf of Homeland Housewares, LLC (“the opponent” hereunder), filed an opposition action against the trademark “” (No. 18742566) (“the opposed mark” hereunder) on February 6, 2017, claiming that registration of the opposed mark infringes on the opponent’s prior rights. In the opposition, we mainly argued that 1) the opponent has the prior trademark rights, 2) the opposed mark is similar to cited marks over similar goods, 3) the high reputation of the opponent and the series of “Bullet” marks， 4) the registration and use of the opposed mark violates the principle of good faith. After examination, the CTMO issued the decision that the opposed mark “NUTRIBULLET” should not be approved for registration.
Kangxin Partners, P.C., acting on behalf of Homeland Housewares, LLC (“the opponent” hereunder), filed an opposition action against the trademark “” (No. 18742566) (“the opposed mark” hereunder) on February 6, 2017 and filed the supplementary pleading on May 5, 2017, mainly arguing that the application of the opposed mark infringes on the opponent’s prior trademark rights.
Below are details of the opposed mark:
We mainly argued that 1) registration of opposed mark harms the prior trademark rights of the opponent; 2) registration and use of the opposed mark violates the principles of good faith on the basis of Articles 7 and 30 of PRC Trademark Law:
The opposed mark is similar to the cited marks over the designated goods. The distinctive part of the opposed mark is extremely similar to that of the cited marks (No. 9129742), and (No. 15468789) in respect of composing letters, pronunciation and overall appearance, etc. The designated items “Containers for household or kitchen use, etc.” have strong connections with those of the cited marks “kitchen machines, electric,” thus, the opposed mark constitutes a similar mark over similar goods to the cited marks.
The opponent is the owner of the “BULLET” marks. The cited marks have acquired high reputation through use and promotion. We mainly argued the following aspects: 1) the origin of the “BULLET” marks; 2) the opponent’s marks “Magic Bullet,”“Nutri Bullet” and “Bullet” have been widely registered globally; 3) promotion and use materials relating to the cited marks; 4) copyright protection for unique logo of opponent’s company; 5) wide protection for the opponent’s marks “Magic Bullet,”“Nutri Bullet” and “Bullet.”
Registration and use of the opposed mark violate principles of good faith and breaches the legislative spirit of China Trademark Law which prohibits registering marks through deceptive or improper means. To support this argument, the attorney organized evidence to prove the opposing party’s bad faith. Evidence shows that the opposing party registered not only the opposed mark but also many marks which are similar or identical to other well-known brands. Such evidence further proves the opposing party’s bad faith.
On February 27, 2018, the CTMO issued the decision, holding that：
1) The opponent’s cited marks have strong distinctiveness and the opposed mark is identical with the cited marks. There is slim chance that the opposing party created the opposed mark independently. The designated goods of the marks of both parties are related to kitchen and household products, and have certain connection; it is difficult to assume the opposing party filed the mark through proper means.
2) There are 300 marks in the name of the opposing party, beyond the normal requirement of business activities of a general entity. Considering that the opposed mark is identical with the cited marks, the CTMO holds that the opposing party has the intention to copy other’s marks, which violates the good-faith principle and will cause negative social influence.
Thus, the opposed trademark was rejected for registration.