PREFACE

In a case of invalidation of another person’s registered trademark, the prior trademark right holder may apply, in addition to the provisions of the law on the same and similar recognition of the trademark, the provisions of Paragraph 1 of Article 44 May also apply to the acquisition of the registration by illegitimate means at the same time.

CASE SHARING

Recently, we acted for Hubei Province Shihua Brewing Co., Ltd. to file the declaration of invalidation against No.27494347 trademark ‘霸王醉’on Class 21, as per the examination, China National Intellectual Property Administration held that more than 640 trademarks under Hubei Yun Dong Ren Cups and Pots Manufacturing Co., Ltd, including ‘霸王醉’or other similar trademarks, total 13 pieces of trademarks, such kind of acts have already exceeded the normal demand of the production, it has the intention of unfair competition or seeking illegal benefits with the help of other’s brands, which disturbs the normal order of the trademark registration, furthermore, constituted the situation that obtaining the registration by any other improper means as provided by Article 44-1 of the Trademark Law, the disputed trademark ‘霸王醉’has been ruled for the declaration of invalidation.

LEGAL BASIS

Article 44-1 of the Trademark Law provides that: where a registered trademark violates the provisions of Article 4, Article 10, Article 11, Article 12, or Paragraph 4 of Article 19 of this Law, or the registration of a registered trademark is obtained by deception or any other unfair means, the Trademark Office shall invalidate the registered trademark; Any other entity or individual may request the Trademark Review and Adjudication Board to invalidate the registered trademark.

Among them, the newly added contents of Article 4 and Article 19-4, are equivalent to substantially narrow the scope of application of the provisions of "other unfair means", which also confirms the application of the clause "other unfair means" has public welfare nature, that is, to safeguard public interests, public order and trademark registration order.

THE MEANING OF THE CASE

Hubei Shihua Brewing Co., Ltd., the applicant of this case, is mainly engaged in the production and sales of white sprits, fruit wines, prepared wines and other wines, beverages and non-alcoholic beverages, glass products, the registrant of the disputed trademark, Hubei Yun Dong Ren Cups and Pots Manufacturing Co., Ltd mainly producing cups and pots, glass products and metal production, the business scope of the industry are partially overlapped. Both of them are located in Xiangyang City, Hubei Province. The applicant has not apply for registering the trademark ‘霸王醉’on the goods of Class 21, and has registered several trademarks ‘霸王醉’on the alcoholic goods of Class 33, and has no rights of prior trademark on similar goods. In view of this situation, we applied the provisions of Article 44-1 of the Trademark Law on obtaining the trademark registration by improper means, and successfully invalidated the disputed trademark. Similarly, more than other 10 invalidation cases were success, also effectively protection the legitimate rights and interests of the trademark right holders. 

Mr. WANG Youwei’s team from Janlea Trademark Co., Ltd. offered legal service to Hubei Shihua Brewing Co., Ltd.