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Chispo's litigation team successfully invalidate the trademark "Bo-He-Nuo-Mi-Cong(Chinese characters)" under No. 11413148 through litigation

author:CHISPO

time:2020-11-12

-- Focus of the case 
Whether the disputed trademark has damaged the applicant’s trade name rights; whether the disputed trademark and the cited trademark can be identified as similar trademarks in similar services and break the rules of the International Classification

-- Introduction of the Case

 

Plaintiff: Shanghai Yi-Ge Brand Planning Co., Ltd. ("Yi-Ge Company")
Defendant: China National Intellectual Property Administration (formerly the Trademark Review and Adjudication Board of the State Administration for Industry and Commerce, "the TRAB")
The third party: Beijing BNC Garment Co., Ltd. ("BNC Company")

BNC Company was established in 2009, and its main business is in the field of clothing. Since its founder Ms. Hong Huang has a high social reputation, the mark " Bo-He-Nuo-Mi-Cong(Chinese characters)" has attracted many publicity and reports by the media. After its establishment, the company applied for the application of the trademark "Bo-He-Nuo-Mi-Cong(Chinese characters)" on the clothing.

Yi-Ge Company has filed the application for the mark "Bo-He-Nuo-Mi-Cong (Chinese characters)" in Class 35 under No. 1141314 afterwards. BNC Company applied for an invalidation against the trademark filed by Yige Company in December 2015, claiming that this trademark and BNC's cited trademark are similar in respect of the similar goods, and the rights of the trade name were damaged.

The TRAB identified that the two trademarks constitute similar trademarks used on similar services, based on the grounds that the use of the designated service of "sales promotion for others" by the disputed the trademark is related to goods of "clothing, schoolbags" and other goods used by the cited two trademarks. Hence, the disputed trademark designed on the service of "sales promotion for others" has been claimed invalid.

Yi-Ge Company who was dissatisfied with the decision made by the TRAB, had filed an administrative lawsuit with the Beijing Intellectual Property Court.

-- Judgment Result
Although the service of "sales promotion for others" designated by the disputed trademark does not constitute the same or similar goods or services to the goods approved for use by the cited trademark, the disputed trademark has damaged the BNC company's trade name right. The accused ruling made by the TRAB contained errors in the applicable laws and regulations, but the substantive conclusions were correct and there was no need for revocation. Yi-Ge litigation request should be rejected.

-- Lawyer's Comments
This case fully advocated the applicable clauses during the review stage, laying a solid foundation for the subsequent litigation procedures. After receiving support during the review stage, the attorney of this case continued to dig into the evidence in the litigation and found that BNC Company does not only sells its own brands, but also promotes and sells clothing of other brands, which is a typical service of "sales promotion for others". Therefore, the client was further requested to provide relevant evidence such as contracts, invoices, etc., in order to prove that the BNC Company had actually engaged in this field before the application of the disputed trademark. Finally, although the court of first instance did not support the TRAB’s finding that it broke through the "international classification of goods and services", it still invalidated the disputed trademark for infringing on the prior trade name rights of BNC Company.

In trademark confirmation cases where relative grounds are applied, distinctiveness of trademark and popularity, similarity of sign, similarity of goods, maliciousness, etc. are all factors that need to be considered comprehensively And also these factors are also like seesaws. If one or several factors play the strong role, and the judgment standards of other factors will be relatively lower. In this case, the cited trademark and the third party’s trade name "Bo-He-Nuo-Mi-Cong (Chinese characters)" are very distinctive. It uses a combination of three completely unrelated foods, giving people a refreshing feeling, and the possibility of other subjects creating exactly the same logo is very slim. However, Yi-Ge Company applied for registration of exactly the same trademark, after BNC Company had registered and launched its brand. It is obviously hard to be regarded as goodwill.  Under such circumstances, the standards for determining the similarity and popularity of the products will be appropriately lowered. Hence, it is recommended that companies try their best to choose brand names that are original and distinctive, which will not only help the trademark to pass the approval and registration, but also obtain stronger protection.