2023 Typical Cases Of Trademark Opposition And Invalidation

The CNIPA has recently released 10 typical trademark opposition and adjudication cases in 2023, including:

1. "Huangta Plaster in Chinese" trademark opposition case. The CNIPA found that the "Huangta Plaster" mark has a certain degree of fame after long-term use by the opponent. The opposed mark and the cited mark have the same text composition. The oppose mark's designated services in Class 35 and the cited mark's approved goods in Class 5 constituted as similar. Additionally, the opposed mark applicant and the opponent are from the same town. The registration of the opposed mark is likely to cause confusion to the relevant public.
2. "A Mere Touch of Green in Chinese" trademark opposition case. The CNIPA found that the opponent's "A Mere Touch of Green in Chinese" dance poetry drama has a high reputation and influence. The opponent, as a business operator in the same industry, applied for the opposed mark designating "music performances; providing musical and dance performance in performance venue" constitutes as bad faith filing of the opponent's mark.
3. "Slow Flying Angel in Chinese & MAN FEI ANGEL & Design" trademark opposition case. The opponent cited prior marks but the CNIPA did not find mark similarity. However, considering that "Slow Flying Angel in Chinese" is usually a friendly term for children with intellectual disabilities, autism, or learning difficulties, the CNIPA proactively applied Article 10(1)viii of the Trademark Law in finding that the use of the opposed mark on "spirits (beverages); liquor" and other goods is likely to have adverse social impacts.
4. "Baishuifan in Chinese" trademark opposition case. The CNIPA found that prior to the application of the opposed mark, the "Baishuifan Radish in Chinese" mark had been used as a local agricultural product geographical indication product. Although the opposed party argued that the goods it sold came from that place, but it is not a local grower, so it is not reasonable for it to register the geographical indication name of local agricultural products as a trademark.
5. "DEMARSON" trademark invalidation case. This case regulates the act of multiple related entities hoarding trademarks through hidden relationships, and improves the accuracy and deterrence of combating bad faith trademark hoarding.
6. "Fenghua Beauty in Chinese" trademark invalidation case. This case clarifies the applicable requirements for well-known trademark recognitions, and moderately reduces the burden of proof based on the specific circumstances of the case. This case is not only in line with the dynamic changes in trademark fame, but can also reduce the cost of trademark protection and encourage trademark owners to pay attention to trademark management.
7. "MASTRO'S STEAKHOUSE M & Design" trademark invalidation case. This case determined that the respondent's application for registration of the disputed mark was in fact an application by a trademark agency using the camouflage of its affiliated company in exploiting a loophole. Such action violates Article 19(4) of the Trademark Law.
8. "100,000 Whys in Chinese & 100,000 WHYS & Design" trademark invalidation case. This case comprehensively considered factors such as the historical origins, continued use, and influence of the well-known book brand "100,000 WHYS in Chinese" among the relevant public. This case provided an accurate determination as to whether the registration of a well-known book title as a trademark violates the distinctiveness clause, affirming the legitimacy and legality of the trademark owner's use of the disputed trademark, and maintaining the validity of trademark rights.
9. 9. 8 series cases of invalidations against "Platinum Selection in Chinese." When applying Article 15(2) of the Trademark Law, the CNIPA examiners did not stick to the evidence materials in individual cases but conducted an overall analysis of related cases. Comprehensive consideration should be taken to achieve the unification of legal effects and social effects.

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