CTMO may consider other applications filed by applicant in opposition proceedings

Generally, when examining opposition proceedings, the China Trademark Office (CTMO) considers only the opposed trademark and the cited trademark - other trademark applications filed by the applicant have no impact on the CTMO’s decision. However, such applications may constitute evidence that the applicant is seeking to file "pre-emptive trademarks", which may disturb the market and cause a “negative social impact”. Two recent cases show that the CTMO may take other trademark applications into consideration when assessing the situation and deciding on the opposition.

In the first case, Kent Nutrition Group Inc used the trademark BYNATURE for pet food in Class 31 of the Nice Classification. However, before Kent could file an application to register its trademark, a company called Ningbo Guan Ya Trade and Business Co Ltd filed an identical trademark application for BYNATURE, also for pet food in Class 31.

Kent filed an opposition, complaining about the bad faith of the applicant, and submitting that the latter had filed several other trademark applications, such as ZIWIPEAK, BLUE SEAL and 福摩FROMM, that were identical to third-party trademarks which had already built up a certain reputation in China and designated similar goods.

In Decision (2012) No 62322 of December 4 2012, the CTMO held that the filing of the trademark BYNATURE constituted a malicious imitation, violated the principle of good faith and would cause a negative social impact, contrary to Article 10(1)(8) of the China Trademark Law, which refers to an “unhealthy influence” as an absolute ground for refusal.

The second case concerned the trademark 贝吉哈克 (the Chinese transliteration of 'Bergerac'), filed by an individual named Qu Ep Shu. The word 'Bergerac' is a French appellation of origin for wines and the French Institut National des Appellations d’Origine (INAO) filed an opposition against this application.

In Decision (2012) No 60558 of November 27 2012, the CTMO stated that the applicant was not from the region governed by the appellation of origin 'Bergerac', and that it had also applied for the registration of the trademark BERGERAC in Latin characters. The opposed trademark, once approved for registration, would mislead the public. Therefore, the CTMO upheld the opponent’s grounds of opposition under Article 16 of the Trademark Law and rejected the application.

In the above two cases, the CTMO clearly indicated that other trademarks filed by the applicant could also be taken into account when reaching a decision.

In the first case, the cited mark had been used by the opponent, but had not yet built “a certain influence”, as stipulated by Article 31 of the Trademark Law. Therefore, this provision could not be applied in this case. However, by taking into consideration other malicious trademark applications filed by the applicant, the CTMO was able to rule that the applicant had “violated the principle of good faith and would cause a negative social impact”, citing the absolute ground for refusal under Article 10 of the law.

In the second case, the CTMO took into consideration the application for registration of the mark in Latin characters in order to conclude that the applicant had unjustifiable intentions and that there was a likelihood of confusion, citing Article 16 to reject the registration of the opposed mark.

The two cases thus show that the CTMO will sometimes base its decision on the subjective intention of the applicant. Therefore, it is important for opponents to bring evidence of the applicant's trademark filing activities, as this can become a very important factor when deciding whether there is a likelihood of confusion. When preparing opposition arguments and related evidence, it is essential to do a full search of all the trademarks filed by the applicant and carefully assess the latter's possible bad faith. In addition, it is advisable to submit a written petition to the CTMO requesting that all opposition cases involving the same applicant be assigned to the same examiner. Even if all cases cannot be assigned to the same examiner, the examiners in charge of other opposition proceedings will have a chance to become aware of their respective cases, which will give them a more comprehensive picture of the opposed party’s trademark filing activities.

Lei Yongjian, Wan Hui Da Law Firm & Intellectual Property Agency, Beijing

The author represented Kent Group and INAO in the above two cases