A Chinese company registered "
" ("Disputed Mark") on
"Chocolate; Confectionery; Cocoa", etc. in class 30 in
2020. The Hershey Company filed an invalidation action against the
Disputed Mark and prevailed. The CNIPA supported Hershey's both
claims on prior trademarks "Hershey's" and the
absolute grounds of good faith principle.
The registrant of the Disputed Mark appealed the CNIPA decision to the Beijing IP Court, but it appeal was dismissed. It further appealed to the Beijing High Court, and the court found in the second instance judgment that:
In this case, the Disputed Mark is similar to the cited trademarks "HERSHEY'S" in terms of letter composition, pronunciation, and overall visual effect. Hershey's evidence can prove that its "HERSHEY'S" marks enjoy a high reputation in "chocolate, candy" and other goods. If the Disputed Mark and the cited marks were used together on identical or similar goods, it would easily cause confusion and misidentification of the source of the goods to the relevant public. Therefore, the Disputed Mark and the cited marks constituted similar marks used on identical or similar goods. This court affirmed the lower court's judgment.
Regarding "other improper means to obtain registration," it refers to other improper means than deception that disrupt the order of trademark registration, harm the public interest, improperly use public resources, or other ways to seek improper interests. In this case, after obtaining several trademarks similar to Hershey's prior trademarks such as "HEOSHIV'S" and "Hershey's in Chinese Mei Ke" through assignment, the Disputed Mark's registrant applied for registration of 16 marks similar to Hershey's prior trademarks in class 29 and class 30, such as "Hershey's Companion in Chinese," "Hershey's Heritage in Chinese," "Wonderful Hershey's in Chinese," etc., as well as "Roche Family in Chinese," "FELEREO" and other trademarks that are similar to others' prior trademarks. The Disputed Mark's registrant failed to provide a reasonable explanation, which showed that it has the intention of copying and imitating famous trademarks of others and taking advantage of other's goodwill. The number of trademarks obtained also exceeded normal production and business needs, which disturbed the normal order of trademark registration management, and violated the principle of good faith. Such behavior was detrimental to the fair competition order of the market. Therefore, the Disputed Mark's registration constituted as "obtaining registration by other improper means" under Article 44(1) of the 2013 Trademark Law. This court affirmed the lower court's findings regarding this issue.
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