Assignment Or Actual Use Of A Trademark Registered In Bad Faith Does Not Change Its Nature

The Beijing High Court concluded a final judgment on the administrative trademark invalidation dispute between Junshan WANG, the CNIPA, and a third party, Zhiqiang FAN.

The Beijing High Court held that: in this case, the original registrant of the Disputed Mark, Shenzhen Lanxin Weiye Electronics Co., Ltd. filed for more than 80 trademarks in various classes, of which more than 50 marks, including the Disputed Mark, were applied between 2009 and 2011, and the goods and services designated for use in many of the trademarks are not related to the scope of its business. In addition, there was no evidence to prove that it had the intention and behavior to use all the trademarks. Therefore, the above applications obviously exceed the needs of normal production and operation. Furthermore, the trademarks including “Warm Sheep in Chinese,” “You Ke Li Lin in Chinese,”, “lamyal-star,” etc. are identical or similar to the names of famous movie and TV characters, performing arts groups, and other famous marks, which are beyond the scope of coincidence in the absence of any reasonable explanations. In summary, the original registrant's application for the Disputed Mark disrupted the normal order of trademark registration management, damaged the market environment of fair competition, did not have the legitimacy of the registered trademark, which constituted as “by deception or other improper means to obtain the registration of the situation” under Article 41(1) of the 2001 Trademark Law. Zhiqiang FAN's acquisition of the Disputed Mark cannot change the fact that the Disputed Mark was obtained by improper means. Zhiqiang FAN's actual use of the Disputed Mark after registration was not a reasonable explanation to maintain the Disputed Mark's registration.

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