Recently, we have received the ruling of the opposition application case filed on behalf of Guangzhou Baiyunshan Pharmaceutical Group Co., Ltd. against trademark No. 52729836 "Huiren Jinge". The China National Intellectual Property Administration (CNIPA) ruled that trademark No. 52729836 "Huiren Jinge" was not approved for registration in accordance with Article 30 of the Trademark Law.

BRIEFING TO THE CASE

As we all know, “汇仁” (Chinese in Pinyin Hui Ren) and “金戈” (Chinese in Pinyin Jin Ge) are well-known pharmaceutical brands. "Jin Ge" is the first oral PED5 inhibitor in China developed by Guangzhou Baiyunshan Pharmaceutical Group Co., LTD., which lasted 16 years and was officially launched on October 28, 2014, breaking the 13-year monopoly of foreign drugs in China's anti-ED market. The sales volume of " Jin Ge " drug has exceeded the total sales volume of the three foreign brands in China for several times. It is highly influential in local anti-ED drugs. Similarly, as a large pharmaceutical enterprise group in China, "Hui Ren" is also a household name for its "Hui Ren Shen Bao Pian".

However, in this case, the opposed party covets the popularity of the brands of "Jin Ge" and "Hui Ren", intends to attach to the well-known trademarks and seek illegal benefits, and applies for the registration of the trademark of "Huiren Jinge". Guangzhou Baiyunshan Pharmaceutical Group Co., Ltd. and Jiangxi Huiren Pharmaceutical Co., Ltd. filed separate opposition against the disputed trademark. 

The disputed trademark No. 52729836 "Huiren Jinge" applied for registration in the Class 30 "Sugar; Tea; Coffee; Edible Ice; Cereal Products; Meat Pie; Biscuits; Loquat Extract; Honey; Candy" on 5th January 2021, and was announced for preliminary examination on 27th May 2021. The cited trademarks of Guangzhou Pharmaceutical Group are No. 18375676 "Jin Ge" and other trademarks, while the cited trademarks of Huiren Group are No. 2010581 "Hui Ren" and other trademarks. The cited trademarks of both parties are also registered in the Class 30 "Tea; Soup; Honey" and other goods, which completely cover the goods specified by the disputed trademark.

After further inquiry, it was found that the opposing party in this case and a number of related companies have a consistent intention of hoarding and registering a large number of trademarks and copying the names of pharmaceutical brands and industry celebrities. Nearly 100 trademarks have been applied for registration under the name of the person being opposed. In addition to trademarks similar to the pharmaceutical brands of famous pharmaceutical enterprises such as "Jing Ge" and "Hui Ren", there are also "Ge Hong ~ Ge Xianren" (Ge Hong, Taoist theorist, the famous alchemist and pharmaceutical scientist of Eastern Jin Dynasty), "Wenlinlang Li Shizhen" (Li Shizhen, the famous pharmaceutical scientist of Ming Dynasty), "Ye Gui Tian Shi" (Ye Tianshi, The famous medical scientist in Qing Dynasty, one of the "four masters of febrile diseases") and other trademarks with the same name as the famous Chinese medical scientist. Obviously, the opposing party as a pharmaceutical company has a profound understanding of the well-known trademarks and famous people in the pharmaceutical sector. Its application for trademark registration has the malicious intention of illegally occupying public resources and taking the well-known trademarks in the pharmaceutical industry.

CNIPA’S RULING

After the examination, the CNIPA held that some of the goods designated for use by the disputed trademark and the goods designated for use by the cited trademark of Huiren Group belong to similar goods, furthermore, the disputed trademark completely contains the significant part of the cited trademark "Huiren" of Huiren Group. If the two trademarks are used together, consumers may be mistaken for a series of trademarks from the same market subject or there is some specific relationship. The trademarks of both parties constitute similar trademarks used on similar goods. Some of the goods designated for use by the disputed trademark are similar to those approved for use by the cited trademark of Guangzhou Pharmaceutical Group, and the disputed trademark completely contains the cited trademark "Jin Ge" of Guangzhou Pharmaceutical Group. If the trademarks of both parties are used together, consumers may be mistaken for a series of trademarks from the same market subject or have some specific relationship. The trademarks of both parties constitute similar trademarks used on similar goods.

No. 52729836 "Huiren Jinge" trademark shall not be registered, as per Article 30, Article 31, Article 13-3 and Article 35 of the Chinese Trademark Law. 

JANLEA’S COMMENTS AND ANALYSIS

In this case, the opposing party force combines two brands with strong significance and high visibility in the pharmaceutical industry, which obviously has the malicious intention of " brand-name near". This way seems to be opportunistic, however, actually, it is still the copying and imitation of others' well-known trademarks, which is still regulated by the Trademark Law.

In fact, in the process of trademark registration application, the forced coupling like the opposing party is not an exception. What is more, there are some people who are superior: after coupling other people's well-known trademarks, they change the word order of the trademarks, or after combining other people's trademarks, they are divided into several trademarks for separate registration, and then the registered trademarks are used in combination. However, no matter how the combination and transformation of the plagiarized trademarks, they cannot escape the eyes of the trademark examination authority and the prior trademark right holder, and will eventually be severely cracked down on as the disputed trademark in this case.

Hence, at the beginning of designing their own brands, market entities should respect the formed commercial interests of others, consciously stay away from the trademarks of others, take the initiative to distinguish between commercial logos, and try their best to form a unique image and style of their own brands. Instead of copying and combining other people's famous trademarks as opposing party in this case, they seek improper benefits by free-riding on the force coupling, and can only reap the consequences.