The Profile of the Case

On July 27, 2021, Shanghai Tongshuo Children's Products Co., Ltd. applied for No. 52581360 "大罗意威力" (Chinese characters in Pinyin Da Luo Yi Wei Li) trademark on the goods of "oral perfume" under Class 3, and the well-known luxury leather goods company -- LOEWE S.A.entrusted Beijing Janlea Trademark Co., Ltd. to file an opposition application against the trademark within the notice period. On August 9, 2022, the China National Intellectual Property Administration (CNIPA) has decided not to approve the registration of the trademark in accordance with the provisions of Articles 7 and 30 of the Chinese Trademark Law. 

Decision of CNIPA

The opposed trademark "大罗意威力" (Chinese characters in Pinyin Da Luo Yi Wei Li) designates the product to be used as Class 3 "oral perfume". The opposer’s cited the use of the prior-registered the trademark No. 13867914 "罗意威"（Chinese characters in Pinyin is LUO Yi Wei）as Class 3 "Aftershave solution; Perfume; Toilet water "etc. The opposed trademark is different from the opposer’s cited trademark in terms of the functional use of the designate goods and sales channels, and does not belong to similar goods, hence, it does not constitute a similar trademark on similar goods. However, as per the evidence provided by the opposer and after the investigation, besides for the opposed trademark in this case, the opposed party has also applied for the registration of a number of trademarks that are identical or highly similar to those previously used by others and have certain reputation and strong significance, such as: "威耐克" (Chinese characters in Pinyin Wei Nai Ke), "佩戴森机" (Chinese characters in Pinyin Pei Dai Sen Ji), "辛巴宝莉娜" (Chinese characters in Pinyin Xin Ba Bao Li Na), etc., this situation can not be called coincidence, the opposed party has not made a reasonable explanation for its trademark application registration behavior and the source of trademark design and creation, so the CNIPA believes that the opposed party's application for registration of the opposed trademark has obvious plagiarism, imitation of the opposer's trademark intent, the opposed party's behavior is detrimental to the market order of fair competition, violated against the principle of good faith. In accordance with the provisions of Article 7 and Article 30 of the Chinese Trademark Law, the registration of the opposed trademark shall not be approved.

Analysis of the case

Article 7-1 of the Chinese Trademark Law stipulates that the application for registration and use of trademarks shall follow the principle of good faith. Article 30 of the Chinese Trademark Law stipulates that where a trademark applied for registration is not in conformity with the relevant provisions of this Law or is identical with or similar to another person's trademark that has been registered or has been preliminary approved for the identical or similar goods, the Trademark Office shall reject the application and shall not publish it.

The CNIPA applies these two laws, one is the principle law, the other is the substantive law, which belongs to the combination of the application of the law, and the case is judged by using the combination of the application of the laws. 

First of all, the CNIPA believes that the goods designated by the opposed trademark and the goods approved by the cited trademark are not similar goods, so the two trademarks do not constitute similar trademarks on similar goods. According to the usual practice, the CNIPA  strictly abides by the provisions of the "Similar Goods and Services", do not break through, but for the applicant’s disputed trademark, it has serious bad faith, the cited trademark does not reach the level of well-known trademark cases, the CNIPA has relatively mature experience in the flexible application of trademark law, that is, The principle of good faith in Article 7 shall be applied in combination with the provisions of Article 30 which are not in conformity with the provisions of this Law in order to achieve an objective and fair judgment. In this case, the evidence submitted by the opposer is sufficient to prove that the opposed party has obvious malicious intention of copying and imitating the opposer's trademark, so his application for registration of the opposed party's trademark violates the principle of good faith, that is, the provisions of Article 7-1 of the Chinese Trademark Law, and also conforms to Article 30 of the Chinese Trademark Law. Therefore, the CNIPA applies the provisions of Article 7 and Article 30 and makes a decision not to approve the registration of the disputed trademark.

Significance of the Case

For the case that the goods designated by the disputed trademark and the goods approved for use by the opposer's cited trademark are not similar goods, the significance and reputation of the opposer's cited trademark should be emphasized, and the malicious situation of the opposed party should be fully investigated, and sufficient evidence should be provided to support it, so as to improve the chances of success of the opposition. In such cases, the provisions of Article 7 must be cited, and at the same time, when elaborating Article 30, it should be divided into two parts, one is the elaboration of the same similar trademark on the same similar goods, and the other is the elaboration of the application of Article 7 and Article 30 in combination with the malicious intent of the applicant for the disputed trademark.