Recently, in the case regarding the invalidation against No. 5222148 trademark ‘雷津’ (Lei Jin in Chinese Character) on class 32 posed by Budweiser Xuejin Beer Co., Ltd., China National Intellectual Property Administration (CNIPA) applied Article 13.2 and Article 45.1 and 45.2 of the Trademark Law, that is, the provision that the invalidation of registered trademarks that maliciously imitate others’ well-known trademarks is not subject to the time limit of 5 (five) years, and the invalidation of disputed trademarks that have been registered maliciously for more than 10 years. 

Profile of the case

Xie Haitao’s trademark ‘雷津’(Lei Jin in Chinese Characters) with trademark No. 5222148, which is registered on the goods: ‘Beer; Non-alcoholic juice; Peanut milk; Non-alcoholic fruit drinks; Mineral water; Sour soy milk; Distilled water for drink; Beverage preparation; Liqueur ingredient; Malt beer’ on Class 32, has been approved for the registration on 28th March 2009, and has been transferred to Shanghai Zhuan Chi Intellectual Property Agency Co., Ltd. on 20th January 2010, again, has been transferred to Fujian Bai Nian Bai Wei Beer Co., Ltd. on 13th October 2017. Budweiser Xuejin Beer Co., Ltd. has filed the application for invalidating the disputed trademark on 26th December 2019. 

The date of registration of the disputed trademark is 28th March 2009. When the dispute is filed on 26th December 2019, it has been registered for more than ten years, and the prior right holder or interested party cannot file a request for invalidation based on relative grounds. However, according to Article 45.1 of the Trademark Law, the owner of a well-known trademark is not subject to the time limit of five years for malicious registration. The cited trademark of Budweiser Xue Jin, "雪津" (Xue Jin in Chinese Character), has been recognized as a well-known trademark of "beer" in its early years. In view of this malicious registered trademark, Budweiser Xue Jin filed an application for invalidation of the disputed trademark in accordance with the provisions of Article 13.2 and Article 45.1 and 45.2 of the Trademark Law.

Judgement of China National Intellectual Property Administration (CNIPA)

In this case, the facts ascertained by our Bureau and the evidence submitted by the applicant can prove that the use of the cited trademark on the "beer" commodity was well known to the relevant public prior to the date of application of the disputed trademark. The disputed trademark consists of the character "雷津" and the corresponding pinyin "LEIJIN", which is similar to the applicant's "雪津" trademark in terms of character composition, call, font and so on, and has constituted a copy of the applicant's "雪津" trademark. In particular, considering that Xie Haitao, the original registrant of the disputed trademark, is located in Fujian Province with the applicant and should be aware of the applicant's cited trademark. Moreover, after the registration of the disputed trademark was approved on 28th March 2009, he applied to our Bureau for the transfer of the disputed trademark to Shanghai Zhuanchi Intellectual Property Agency Co., Ltd. on 11th June 2009. If the disputed trademark is approved to be used in Category 32 "beer" and other commodities, the relevant consumers will easily believe that there is some connection between the supplier of the goods marking the disputed trademark and the applicant, which will improperly take advantage of the applicant's reputation and cause damage to the interests of the applicant. Therefore, the registration of the disputed trademark constitutes the situation referred to in the second paragraph of Article 13 of the Trademark Law of 2001, in accordance with the provisions of Article 13.2 of the Trademark Law of the People's Republic of China in 2001 and Article 45.1, 45.2 and Article 46 of the Trademark Law of the People's Republic of China, our Office ruled as follows: The disputed trademark shall be declared invalid.

Analysis to the case

1. Protection to similar goods of the well-known trademark

The Trademark Office's protection of well-known trademarks is not limited to the cross-class protection of different or dissimilar goods or services. In this case, the "beer" and other goods designated by the disputed trademark belong to the identical or similar goods with the well-known "beer" of the applicant's trademark "雪津"(Xue Jin in Chinese Characters), and because the applicant's "雪津"(Xue Jin in Chinese Characters) is a well-known trademark, In addition, the disputed trademark is a malicious registered trademark that has been registered for more than five years. Therefore, the Trademark Office grants protection to the well-known trademark of "雪津"(Xue Jin in Chinese Characters)on similar goods.

2. Consideration of "malicious registration" as stipulated in Article 45. 1 of the Trademark Law

Article 45.1 of the Trademark Law stipulates that "no five-year time limit shall be imposed on the owner of a well-known trademark for malicious registration".

The disputed trademark has been approved for the registration on 28th March 2009, The CNIPA’s judgement to "malicious registration" in this case takes into account both subjective and objective factors as follows, 

(1) Reputation: The applicant's trademark "雪津" (Xue Jin in Chinese Characters) has been used in the "beer" goods and is well known to the relevant public.

(2) Business Address: Xie Haitao, the original registrant of the disputed trademark, is located in Fujian Province with the applicant and should know the applicant's cited trademark.

(3) Transfer of the disputed trademark: After the disputed trademark was approved for registration (28th March 2009), it was transferred to Shanghai Zhuonchi Intellectual Property Agency Co., Ltd. on 11th June 2009. The action is not on good will. 

In this case, when the disputed trademark has been registered for five years and the applicant's trademark "雪津" (Xue Jin in Chinese characters) is a well-known trademark, the applicant's application for invalidation of the disputed trademark registered in bad faith can be supported. For "malicious registration" as stipulated in Article 45.1 of the Trademark Law, the Trademark Office will consider the geographical factors of both parties and the transfer of the trademark when reviewing the case. The fact that the original registrant of the disputed trademark is in the same region as the applicant and transfers the disputed trademark to the trademark agency after the disputed trademark is approved for registration is also an important consideration in the judgment of bad faith.

Experience from the processing of the case

In the case of trademark opposition and invalidation, the situation of the disputed trademark should be deeply explored. If the disputed trademark has been transferred, the application and use of the original registrant of the disputed trademark can be investigated from various aspects. If the original registrant of the disputed trademark applies and uses the trademark with obvious bad faith, it may be invalidated even if the disputed trademark is transferred to a third party. When processing a case, the malicious circumstances of the disputed trademark applicant and the original registrant should be fully displayed, and then, to strive for a favorable result.