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author:CHISPO ATTORNEYS AT
Brief introduction of the case
The brand “Fenbi”of Beijing Fenbi Lantian Technology Co., Ltd. (hereinafter referred to as“Fenbi Lantian Company”) was first established in 2012. Its main business is civil service examinations, so it is also called “Fenbi Civil Service Examinations”and has a high reputation in this field.
On December 23, 2016,Guo Ting, a natural person, applied for the mark“Xin Ruizhi Fenbi Civil Service Examinations”(hereinafter referred to as “disputed trademark”) and obtained registration on education, training and other services. Fenbi Lantian Company filed an invalidation against this trademark, and the China National Intellectual Property Administration (hereinafter referred to as the “CNIPA”) made a decision to maintain the disputed trademark.Fenbi Lantian Company was dissatisfied with the decision and entrusted our firm to file a lawsuit. The Beijing Intellectual Property Court finally determined that thedisputed trademark should be declared invalid in accordance with Articles31, 32 of the Trademark Law, and the CNIPA made a new ruling.
Case central point
Article 31 of theTrademark Law: Whether thedisputed trademark and the cited trademark constitute the similar trademarks for use on the same kind of goods or similar goods.
First: Pertaining to whether the disputed trademark constitutes a preemptive registration of a trademark that has been used by others and has certain influence byimpropriety means.
When handling the case, we provided evidence and arguments from the perspectives and all the aspects ofthe popularity, likelihood of confusion, and the illegality of the third personconcerning the trademarks “Fenbi Civil Service Examinations” and“Fenbi”.
1. Regarding the popularity of the marks “Fenbi Civil Service Examinations” and “Fenbi”
First of all, the time and geographical requirementsof evidence need to be subject to the filing date of thedisputed trademark, and evidence from the whole country shall be collected before then. Of course, the evidence of continued use after that should also be submitted appropriately to prove the continued use of the trademark and the continuation of the reputation. In this case, audit reports, national library search reports, media reports from authoritative websites such as People’s Daily Online, official website, Weibo, APP downloads and other evidence were submitted around the use and publicity of “Fenbi Civil Service Examinations” and “Fenbi” to prove its prior continuous use and popularity. It should be noted that the different evidences need to reflect the association between the prior trademark and its subject.
2. With regard to the likelihood of confusion
In order to prove that the mark “Xin Ruizhi Fenbi Civil Service Examinations”is similar to the prior “Fenbi Civil Service Examinations” and“Fenbi”which have been prior used by the plaintiff, except objective comparison, we also respectively search the “Fenbi Civil Service Examinations” and the “Xin Ruizhi Fenbi Civil Service Examinations” in browsers and WeChat platform. The search results only point to the plaintiff, which is sufficient to prove that the registration and use of the disputed trademark will cause actual confusion among the relevant public.
3. Regarding the impropriety of the third person
The third person in this case is a natural person, which has a certain degree of concealment compared to a legal person. However, through multiple searches and verifications, we finally identified the third person as the operator of an education and training organization, and inferred its impropriety based on this.
Second: Whether the disputed trademarkand the cited trademark constitute the similar trademarks for use on the same kind of goods or similar goods.
Except applying Article 32 of the Trademark Law, the Court also determined that the disputed trademark“Xin Ruizhi Fenbi Civil Service Examinations”constitute similarities to the “Fenbi Live Class (in Chinese characters)”, and declared invalid of its all services approved for use. Meanwhile, the Court considered the popularity and the likelihood of confusion of “Fenbi Civil Service Examinations” and“Fenbi” when applying this article.