Recently, Unitalen helped our client Dekor won an administrative litigation case before the Beijing IP Court, concerning the invalidation of the "济象" (pronounced as “Jixiang”) trademark (the "disputed trademark") registered in Class 19 for "wood floor" goods.
Dekor Group, the plaintiff, is the prior right holder of “圣象”(pronounced as “Shengxiang”) as both trademark and business name, and enjoys the exclusive right to use the registered trademark in Class 19 for "flooring" goods. Their "圣象" brand has been recognized as a well-known trademark in China many times since 2005.
The disputed trademark also registered in Class 19 in this case was filed on May 13, 2010 for “wood, plywood, floor wood, veneer, plywood, flooring, wood pulp board for construction, fiberboard, resin composite board, wood floor” and other goods, and approved for registration on May 14, 2011. The registrant of the disputed trademark first added the "wood floor" item by changing the business scope of the company, and then carried out trademark infringement through the locally registered affiliated company with business name as "圣象" (“Shengxiang”).
In July 2019, Dekor Group filed a trademark invalidation request against the disputed trademark with the Trademark Office, which, however, was ruled to maintain the registration of the disputed trademark on May 30. Dekor Group thus entrusted Unitalen to the administrative lawsuit for invalidation of the case.
The collegiate panel supported Dekor’s proposition based on the second paragraph of Article 13 and the second paragraph of Article 41 of the 2001 Trademark Law and held that:
1. The Dekor Group was established in 2002. After the continuous use of the “圣象" wooden floor and the publicity it has obtained, the "圣象" trademark has constituted well-known trademark for use on “flooring, wood floor” goods prior to the application for the registration of the disputed trademark in 2010.
2. Although the disputed trademark has been registered for more than five years, its registration can be considered as the act out of “bad faith” through the actual use in production and sales, as well as the related trademark infringement cases conducted by the registrant of the disputed trademark and its affiliated companies, as the operators in the same industry.
3. The "flooring, wood floor" and other goods approved for use by the disputed trademark has overlapped with the goods approved for use by the plaintiff’s cited trademark. The registration and use of the disputed trademark on these goods can easily mislead the relevant public and cause harm on the interests of the well-known trademark registrant.
Therefore, the court found that the application for registration of the disputed trademark on the "flooring, wood floor" goods has infringed on the Dekor’s well-known trademark right in violation of the provisions of Paragraph 2 of Article 13, paragraph 2 of the Trademark Law.
This case is a typical civil case for trademark cross protection. Unitalen lawyers have done sufficient proving in regard to the clause of "the owner of a well-known trademark is not subject to a five-year time limit for maliciously registered trademarks", which focused on demonstrating the fact that the plaintiff’s trademark has constituted well-known trademark and the malicious behavior of the registrant of the disputed trademark constituted in actual use. The Beijing IP Court of the first instance ruled the victory of this case, based on the judicial guidelines of the Supreme People’s Court in relevant cases, applying the provisions of Paragraph 2 Article 13 of the 2001 Trademark Law.