Recently, we have acted for Rui Xin Auto Parts Co., Ltd., to file the opposition application against the trademark “RACE CHIP” with No. 39731767 to China National Intelletual Property Administration. China National Intellectual Property Administration issued the verdict to the case, supported our side’s claims on the oppostion, and deciced not to grant the registration to the tradmark. 

Introduction to the Case

Shanghai Ru Fei Na Electronic Technologies Co., Ltd. (hereinafter referred to as person challenged) has applied for the trademark “RACE CHIP” (hereinafter referred to as the disputed trademark) with No. 39731767 on Class 35 “Advertising” on 17th July 2019, the application has gained the preliminary publication on 13th January 2020. Also, the opponent applied a number of trademarks similar to other famous trademarks in many Classes in short period. 

Rui Xin Auto Parts Co., Ltd.(the opponent of the case) filed opposition application against the disputed trademark based on its prior registered trademarks “RACE CHIP” (hereinafter referred as cited trademarks) with No. G1285909 and No. 34478058 on Class 9, 12, 37 and 42.

Verdict

China National Intellectual Property Administration held, first of all, the desiganted servcie of the disputed tradmark are difference from the cited trademarks’ approved goods and srvices in terms of function and service contents, two sides did not consitute similar tradmarks in terms of the use on similar service. However, the disputed tradmark is completely idenctial to the cited trademarks, in addition, the person challenged applied for the regsitration of several tradmarks in many classes that are the same or similar to others’ registered or prior trademarks with certain reputation. Hence, the registration applied by the person challenged has the intention to imitate and copy other person’s tradmark. The behaivor violates the legislative spirit of the Trademark Law on the prohibition of gaining the registration by fraudulent and other improper means, disturbing the normal trademark regsitration, also, damages the fair market competeion order. Therefore, China National Intellectual Property Administration ruled that the registration of the disputed trademark should not be approved. 

Case Analysis

In this case, the disputed trademark’s designated service did not constitute similarity to the opponent’s cited trademarks’ approved services, in other words, two sides did not constitute similar trademarks in terms of the use on the similar services. Generally, the disputed trademark will be granted for the registration. However, the particularity of the case lies in the strong malevolence of the person challenged, mainly reflected in, 1. The disputed trademark is completely identical to cited trademarks. 2. the person challenged applied for the regsitration of several tradmarks in many classes that are the same or similar to others’ registered or prior trademarks with certain reputation, especially, many of them have been rejected or have been filed opposition by concerend righer holders. As a result, the disputed tradmark is rejected for the registration. From this case, we can see that, besides for the tradmark similairty, the malevolence of the person challenged is also one of the main points to be considered in the examination of the trademark oppostion. In the future cases regarding rights protection of opposition, if behaviors of the person challenged has been found meet the two points above, i.e. malicious trademark applications, can actively explain the stiutation to China National Intellectual Property Administration, also, to protect the opponent’s proior right based on this successful prior case regarding protection right.