Pre-emptive trademark registration successfully challenged

The Trademarks Law of the People’s Republic of China prohibits the pre-emptive registration of a trademark that:

• is already in use by another person in respect of identical or similar goods; and
• has gained a certain level of influence in China.

Funktion One Research Limited, an internationally renowned inventor and manufacturer of professional point-source loudspeaker systems, has successfully established that the trademark filed by Wu Meiling, a Chinese individual, was a pre-emptive registration of the FUNKTION-ONE mark, which had attained a certain level of influence in China prior to the filing of Wu’s mark.

Funktion One’s products have gained a high regard internationally for their unique techniques, designs and perfect acoustics, and have been adopted for use in prestigious events such as The Central Show Arena at London's Millennium Dome in the year 2000.

Wu’s mark (featured below) was filed on March 16 2005 in respect of, among other things, loudspeakers and sound reproduction apparatus, and is a substantial reproduction of Funktion One’s marks.

Wu’s mark:

Funktion One’s marks:

Notwithstanding that the evidence of use of Funktion One’s marks in China prior to the filing date of Wu’s mark was not very substantial, the Trademark Review and Adjudication Board ruled that, based on the voluminous additional evidence submitted (which clearly showed that the FUNKTION-ONE mark was well known not only internationally, but also amongst the relevant trade in China), the mark had satisfied the requirement of having attained a “certain influence” in China.

The following were all accepted as evidence of use of Funktion One’s marks:

• Funktion One’s participation in international and local exhibitions;
• write-ups on its products in international and local trade magazines proven to be circulated in China;
• the many professional awards won by Funktion One; and
• specific correspondence from Chinese companies expressing strong interest in doing business with Funktion One.

Florence Lam, Wilkinson & Grist, Hong Kong

Wilkinson & Grist acted for Funktion One