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author:CHISPO ATTORNEYS AT
The trademark RegistrationNo. 27659650 “Yuan Wei Lai (Chinese characters)”
has beendeclared invalid due to malicious registration
Brief introductionof the case
Dai Xueliang (hereinafter referred to as the “respondent”) applied for the registration ofthe “Yuan Wei Lai”trademark (hereinafter referred to as the “disputed trademark”) on November 23, 2017,whichhad been approved for registration on January 21, 2020, of which theservice such as “research and development of new products for others” in Class 42had been approved for usage. Ouroffice accepts the client’s entrustment to file a request for invalidation of the disputed trademark in accordance with the relevant provisions of Articles 4, 7, 30, and Paragraph 1 of Article 44 of theTrademark Law. Upon examination, the National Intellectual Property Administration(CNIPA) held that the respondent had the intention of plagiarizing or duplicating the applicant’s high-profile trademark on different or dissimilar goods, which constituted a situation of “obtaining registration by other illegitimate means”, and declared the disputed trademark invalid.
In this case, the approved and registered services of our trademarks“Yuan Fu Dao” , “YuanTi Ku” and other prior trademarks failed to fully cover the designated services of the disputed trademark.Therefore, in order to strive for the CNIPA to apply Paragraph 1 of Article 44 ofthe Trademark Law to nullify services that are not covered, and it is particularly critical to fully exploit the malicious intentions of the respondent. The key to the success in this case is also that we have collected a large amount of evidence to confirm the respondent’s “maliciousness”. The following is the starting point to collect malicious evidence:
First, start with the entity (i.e.individual and the company)
The respondent is a natural person, namely“Dai Xueliang”, whose surname and first name are relatively rare. It is easy to accurately correspond to the companies under his/hername through enterprise search. Among them, the trademark agency “Shanghai GongluIntellectual Property Co., Ltd.”(Dai Xueliang is the actual controller) is the mainstay, supplemented by a number of individual business. These affiliated companies have now displayed “deregistration” or “abnormal operation”, and they have not actually operated.
Second, start with the application for trademark registration:
It wasfound that Dai Xueliang hasapplied for applications of more than 240 trademarks from 2014 to 2018. The word composition of the trademarks was irregular, covering 45 International Classes. In addition to the disputed trademark, Dai Xueliang also preemptively registered the “YuanWei Lai”trademark in a number of Classes, including Classes 9, 41, 42 and other core business areas of our client --goods and services related to online education.
Third, start with the sale of trademarks:
Through investigation of trademarks under the name of Dai Xueliang, it was found that these trademarks were openly sold at a clear price on platforms such as the trademarksearchsoftware “White Rabbit” and the trademark transfer platform “Haobiao.com”. Inaddition, Dai Xueliang began to acquire domain names and sell them at high prices during the college years, which caused a sensation and was reported by the media at the time. Although the sale of domain names is not regulated by the Trademark Law, the sale of domain names can further prove that the purpose of applying for trademark applications is to stock up and sell instead of normal use.
Based on solid evidence, the CNIPA determined in its decision that there are more than 200 trademarks filed/registered in the name of the respondent, among which the “YuanWei Lai”trademark of which the application filed on the goods and servicesin Class 9, 35, 41, 42 and 43,are similar to the applicant’s previous trademark.The respondent failed to provide a reasonable source of the trademark, and some of the trademarks were sold on the trademark transfer platform. The respondent’s actions had obvious intention to copy or plagiarize the applicant’s good reputation trademarks on different or dissimilar goods, disrupting the normal order of trademark registration management, undermining the market order of fair competition, and violating the principle of public order and good customs. The application for registration of the disputed trademark constitutes the “obtained registration by other illegitimate means” as specified in the Paragraph 1 of Article 44 of theTrademark Law, and the disputed trademark shall be declared invalid.