In July 2004, Beijing Sanwei Hezhong Business Management Co.,
Ltd. ("Sanwei Hezhong") applied for the registration of
the "
" mark
("Disputed Mark") for "toys; sports balls; sports
equipment" and other goods in Class 28.
Canterbury Co., Ltd. ("Canterbury") filed an opposition and later an opposition appeal against the Disputed Mark. The TRAD in the opposition appeal determined that the Disputed Mark violated Article 10(1)(viii) of the Trademark Law and should not be registered. Sanwei Hezhong was dissatisfied and appealed to the court. After the first instance at the Beijing First Intermediate Court and the second instance at the Beijing Higher Court, both courts found that the Disputed Mark violated Article 10(1)(viii) of the Trademark Law. Sanwei Hezhong appealed to the Supreme People's Court for retrial. On December 19, 2017, the Supreme People's Court ruled that the registration of the Disputed Mark did not violate Article 10(1)(viii) of the Trademark Law. The Disputed Mark was subsequently published for registration in April 2018.
In October 2018, Canterbury filed an invalidation against the Disputed Mark for violating Article 30 (similar trademarks on similar goods) and Article 32 (previous enterprise name and pre-registration of its prior use mark by improper means), and the first paragraph of Article 44 (obtaining registration by other improper means) of the 2014 Trademark Law. The TRAD did not support its requests.
Canterbury then appealed to the Beijing IP Court. After the hearing, the court held that:
Evidence from Canterbury showed that its brand of "CANTERBURY" and bird head graphics has relatively high fame, and the trademarks had been registered and used in mainland China before the application date of the Disputed Mark. Sanwei Hezhong applied for the registrations of multiple trademarks that were identical or similar to Canterbury's trademarks in multiple classes of goods or services, and its brand promotion and domain name registrations also showed that it subjectively free-rided on Canterbury's brand popularity and misled consumers. Therefore, the application for registration of the Disputed Mark constituted the situation of "obtaining registration by other improper means" in the first paragraph of Article 44 of the 2014 Trademark Law.
Then Sanwei Hezhong filed an appeal before the Beijing High Court and the second instance court, after holding an inquiry among the three parties, ruled as follows.
According to the evidence in the case, before the application date of the Disputed Mark, "CANTERBURY" and the bird's head logo brand under the name of Canterbury already had a relatively high reputation. During the period from July 2004 to February 2005, Sanwei Hezhong applied for the registration of "CANTERBURY," "Ken Bai Li in Chinese," bird's head logo and other nine trademarks. Among them, the bird head logo was determined to have damaged the prior copyright of Canterbury; the "CANTERBURY" was completely included in Canterbury's marks; and the "Ken Bai Li in Chinese" marks have similar pronunciation with Canterbury's marks. Sanwei Hezhong failed to provide a reasonable explanation for the said trademark applications, and there were also domain name registrations and other activities.
Although Sanwei Hezhong submitted evidence of the use of the Disputed Mark at the second instance, however, the number of sales contracts, consignment notes, and invoices submitted were very little, and the corresponding dates were all in 2020, which was more than ten years since the application date of the Disputed Mark. The said evidence of use is not enough to prove that Sanwei Hezhong has continued using the Disputed Mark, and as an operator in the same industry of sporting goods, it cannot prove that its application for the Disputed Mark has subjective good faith through the small amount of use evidence. Therefore, it can be determined that the application for the Disputed Mark has the subjective intention of free-riding the market reputation of others, which disrupts the normal order of trademark registration management and damages the public interest. The registration of the Disputed Mark constituted the situation of "obtaining registration by other improper means" as stipulated in the first paragraph of Article 44 of the 2014 Trademark Law. Sanwei Hezhong's appeal lacked factual and legal basis and should not be supported.
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