Background
We, KANGXIN PARTNERS, P.C., were entrusted by “BIORET AGRI-LOGETTE CONFORT” (hereinafter referred to as “the opposed party”) to file an application for the mark, “
” (No. 51743827) (hereinafter referred to as “the opposed mark”) with coverage of the goods, “Rugs; Carpets; Mats; Linoleum; Floor coverings; Floor mat; Rubber floor; Square carpets; Floor felt; Stables mat” in Class 27 on December 1, 2020.
On December 21, 2021, we received an official notification from the National Intellectual Property Administration, PRC (“CNIPA”), indicating that the company, “Qingzhou Guanqing Rubber Co., Ltd.” (hereinafter referred to as “the opponent”) filed an opposition action against the opposed mark.
After thinking twice, although it is not compulsory to respond to the opposition action according to PRC Trademark Law, we still vigorously submitted a response with CNIPA along with supporting evidence during the prescribed time limit, and finally, achieve the favorable decision from the CNIPA.
Arguments and Evidence of Opponent
² Main Arguments
The opponent requested the CNIPA to reject the opposed mark for registration, because:
1. Registration and use of the opposed mark infringes the opponent’s prior copyrighted artwork (Article 32);
1) The opponent’s prior copyrighted artwork was created on August 14, 2019, which is earlier than the filing date of the opposed mark, namely, December 1, 2020; and
2) The opponent is a famous domestic enterprise, who is engaged in manufacture of rubber products for pigs and cattle. Furthermore, the opponent has published the artwork in 2019 in exhibition and brochures. Thus, the opponent enjoys prior copyright over the logo;
2. The subject mark refers to, “tire tread patters,” which lacks distinctiveness when used over the designated goods. Thus, it is forbidden to be registered as a trademark (Article 11.1.2);
3. The opposed party filed the opposed mark in bad faith for illegal profits; and
4. Registration and use of the opposed mark violates the regulation of Article 15.2 of PRC Trademark Law.
² Supporting Evidence
The opponent submitted the following evidence to support their arguments:
Evidence 1: Purchase contract signed between the opponent and the company, “Qingdao Hekang Premise Machinery Co., Ltd.” on August 14, 2019. The opponent purchases anti-skidding mats branded with, “
” from this company;
Evidence 2: Two copies of Bank remittance vouchers between the opponent and “Qingdao Hekang Premise Machinery Co., Ltd.” generated on October 15, 2019 and May 13, 2020;
Evidence 3: Copy of value added tax issued by “Qingdao Hekang Premise Machinery Co., Ltd.” to the opponent dated May 13, 2020, after they received the payment from the opponent;
Evidence 4: Copies of agreement signed between the opponent and “Qingzhou Jiahong Print Centre” for brochures and the corresponding payment receipts on October 8, 2020;
Evidence 5: Copies of brochures concerning introduction to the “tire tread patters” products, and such brochures have been released on the Exhibition of Shijiazhuang, Hebei Province on October 11, 2020; and
Evidence 6: Picture of the opponent’s product
Challenged Aspects and Evidence of Opposed Party
The opposed party requested the CNIPA to approve the opposed mark for registration, reasoning that:
1. Registration and use of the opposed mark will not infringe the prior copyright of the opponent. On the contrary, the opponent infringes the opposed party’s prior rights. Thus, registration of the opposed mark does not violate Article 32 of PRC Trademark Law;
1) The opponent claims that they created their copyright, “
” on August 14, 2019 and then published it on various exhibitions. But such few scanned copies of evidence lack authenticity and interrelation, which is insufficient to prove that registration and use of the opposed mark infringes the opponent’s prior copyright;
2) The opponent infringes the opposed party’s prior rights of design and copyright in actual use;
In this regard, we claimed that the opposed party has already created and published their copyright before August 14, 2019 along with the supporting evidence 1) certified copy of the certificate of registration issued by EUIPO for the registered Community design No. 003454149-0001, filed on November 8, 2016, along with its Chinese translation; 2) a Chinese article downloaded from the Internet link to a web page written in Chinese dated July 18, 2019 along with the authenticated timestamp document with UniTrust Time Stamp Authority (“TSA”), proving that the opposed party participated in a trade show in Tianjin from July 12 to 14, 2019 during which it presented its good and disclosed the patterns (chevrons) visible on this one, as shown in the photos within this web page: https://mp.weixin.qq.com/s/CZHvKElGOksAJuucKlt-Wg; and 3) journals and media reports of the opposed mark and its designated goods along with their Chinese translation.
2. The opposed mark itself possesses strong distinctiveness and creativeness. Registration of the opposed mark does not violate Article 11 of PRC Trademark Law;
In this regard, we stressed that the opposed mark is a creative and unique design. It is not descriptive of the goods that covered. Hence, it bears a strong inherent distinctive character that has been further strengthened by the extensive and long-term use and promotion. Therefore, registration and use of it will not violate Article 11.1.2 of PRC Trademark Law.
3. The purpose for filing the opposed mark is to protect the opposed party’s rights and actual commerce, which does not violate the principle of good faith; and
In this regard, we claimed that the filing of the opposed mark in China was in no way done in bad faith but with the sole purpose of benefiting from a better protection in this country where the opposed party wishes to use it legally.
The opposed party is victim of counterfeit acts of one of its products, namely its rubber for holding areas in front of robots or in milking parlors “MAGELLAN” (https://www.bioret-agri.com/en-uk/animal-circulation/magellan-16mm-holding-area), in several territories and notably in China.
The opposed party sent a cease and desist letter to the opponent by DHL and email in February 2021 and to which it was never answered.
Thus, in order to fight effectively against these acts and avoid new counterfeits of its product in the future, the opposed party filed the opposed mark in China to seek legal protection.
4. Registration and use of the opposed mark meet the regulations as ruled in PRC Trademark Law.
In this regard, we stressed that the opponent did not submit any evidence proving the relationship between them and the opposed party. Therefore, this argument claimed by the opponent can’t be supported.
What’s more, in absence of the permission by the opposed party, the opponent maliciously uses the opposed party’s brand and takes action against the real owner’s trademark, which seriously damages the opposed party’s legal rights, disturbs the fair trademark registration management and market order, and will easily cause negative effects to the society.
Thus, the opposed mark meets the regulations as ruled in PRC Trademark Law and it should be approved for registration.
Official Decision
After examination, the CNIPA approved the opposed mark for registration over all of the designated goods, reasoning that:
1. Given that the opponent does not enjoy prior right over similar goods, the opposed mark could be approved according to fist-to-file principle of PRC Trademark Law;
2. The opposed mark possesses inherent distinctiveness when used over the designated goods, which does not violate Article 11 of PRC Trademark Law;
3. The evidence submitted by the opponent is insufficient to prove that:
1) The opposed party maliciously copies and imitates the opponent’s prior used and renowned mark;
2) Registration and use of the opposed mark infringes the opponent’s prior copyright; or
3) Registration of the opposed mark violates the regulations of Article 15.2 of PRC Trademark Law.
Key Issues of the Case
The key issues could be summarized as follows 1) whether the opposed mark lacks of distinctiveness; and 2) whether registration of the opposed mark infringes the opponent’s prior copyrighted artwork.
With respect to Issue 1, we mainly claim that the opposed mark is composed of unique design with the contours, lines and dots in special combination, which could be functioned as a trademark according to Article 8 of China Trademark Law, “in respect of any visual sign capable of distinguishing the goods or service of one natural person, legal entity or any other organization from that of others, including any word, design, letters of an alphabet, numerals, three-dimensional symbol, combinations of colors, sound, etc and their combination, an application may be filed for registration.”
With respect to Issue 2, generally speaking, the following evidence will be helpful to prove that a party enjoys prior copyright over the logo: creation and publication evidence to show the ownership, such as creation contract with author or design company, manuscript when designing the works, prior creation and publication materials, etc.. In this case, we stressed the insufficiency of evidence submitted by the opponent to prove their arguments, and also submitted creation and publication documents to prove that the opposed party is the real owner of the logo.
Enlightening and Guiding
In light of the above, we believe that it will be helpful to take the following tips into account:
1. Respond to an opposition action if other party initiates an opposition action
If a third party initiates an opposition action against our mark, although it is not compulsory, we would recommend taking the opportunity to respond to the opponent’s pleading and challenge their submitted evidence. The CNIPA will usually check the argumentations claimed by both parties before making the final decision, and thus, responding the opposition attack will be a good way to win the examiners' heart. Don't abandon it!
In addition, as we have spent much time and money on the substantive examination procedure, if we could win the opposition action finally, our mark will be successfully registered and we will enjoy exclusive right for it and use it legally in China.
2. Notarized and/or legalized evidence
Generally speaking, we usually suggest notarizing and/or legalizing the important evidence in order to enhance its provable value.
As to the paper evidence, we believe that it is fine to notarize and/or legalize it with the local notary.
It is also feasible to notarize the electronic evidence (such as Internet link, website, APP, online shop, pictures, videos, emails, chat screenshots, electronic signature, etc.) with UniTrust Time Stamp Authority (“TSA”), etc. Such notarization will be helpful to prove the authenticity in the specific time.
3. File trademark applications to protect the legal rights
Please note that China follows “first-to-file” principle, meaning that generally, the first person to file a trademark application will have superior rights over that mark. Thus, we suggest filing the client’s own trademark applications in China as soon as possible. It is important to register the client’s mark in China over relevant goods and services to both 1) ensure others do not register or use the client’s mark on their own products and 2) avoid possible infringement claims against the client (if the client plans to use the mark in China).
To better evaluate the chance of success in a registration, it is advisable to conduct a clearance search and 1) take actions against the potential obstacles in advance to try to clear them up; or 2) re-design the mark to make it more distinguishable from the prior citations and try the revised one if necessary.
4. Recording copyright or timestamp for the unique designs
Another tip will be recording a copyright with the China Copyright Protection Center or recording Timestamp for the unique designs, to seek broader protection.
In general, trademarks are used to distinguish the source of goods or services; copyrights are used to protect the design of a particular work. However, we can raise a prior copyright to attack a mark that uses a similar design (a copyright certificate is prima facie evidence that the registrant owns the copyright). Whereas a trademark will protect us from having others use or register a similar mark over similar goods or services (usually: only goods or services in the same subclass), a prior copyright will protect us from having others use or register the copyrighted design in any class.
Please check Kangxin IP platform for more information.