This segment shines a spotlight on the latest trademark law cases from the CNIPA or local Courts in China, offering a glimpse into the evolving landscape of adjudication and prosecution trends and intellectual property policy shifts in judicial and administrative matters concerning Chinese trademark law, all drawn from the most recent decisions and rulings.
Court: Court of Longgang District, Shenzhen, Guangdong Province
Case Number: (2024) Yue 0307 Min Chu No. 37333
Parties Involved: Hangzhou Robam Company. vs. Chongqing Quanmei Company, Shenzhen Robam Company, Faerxing Company,etc
Longgang Court's Ruling:
The Retroactive Impact of Trademark Invalidation on Adjudicated Decisions
The court cited the second paragraph of Article 47 of the Trademark Law of the People's Republic of China, which stipulates that a decision or ruling declaring a registered trademark invalid shall not have retroactive effects on judgments, rulings, or mediation documents pertaining to trademark infringement cases that were adjudicated and enforced by the people's courts prior to the invalidation.This provision equally extends to decisions rendered by the administrative department for industry and commerce concerning trademark infringement, as well as to any trademark transfer or licensing agreements that have already been executed.
However, it is important to note that compensation is required for any losses sustained as a result of the malicious actions of the trademark registrant. The provisiondoes not specify whether the invalidation of a registered trademark impacts the registrant's prior use of the trademark, particularly in relation to whether the former trademark owner may claim that the use of a subsequently registered trademark constitutes infringement.
Credibility of CNIPA Decision on Trademark Status for Ensuring Stability and Predictability
The court has concluded that the decisions rendered by the China National Intellectual Property Administration (CNIPA) concerning trademark registration possess a degree of credibility for the public, including trademark proprietors. As a result, activities such as the utilization, licensing, transfer, or protection of a trademark that depend on these registration decisions should be afforded protection. In instances where a registered trademark is subsequently revoked or declared invalid, the initial legal actions undertaken based on that registration should not be classified as infringing.This principle is vital for ensuring stability and predictability in market operations, which is essential for the transactional security of market participants.
Article 7 of the Trademark Law of the People's Republic of China underscores the necessity for trademark registration and utilization to be conducted in good faith. Should a trademark registrant knowingly apply for or utilize a trademark that infringes upon the prior rights of others, they forfeit their entitlement to protective trust interests. In such instances, irrespective of whether the trademark is subsequently revoked or declared invalid, the holder of the prior rights retains the ability to claim that any subsequent use of the trademark constitutes an infringement.
Consequently, the retroactive implications of decisions regarding the refusal to register, revocation, or invalidation of a trademark in relation to its prior use are contingent upon the conduct of the trademark owner, specifically whether they acted in bad faith. Generally, if a registered trademark is revoked or invalidated, there is no retroactive effect on its use prior to such action, with the exception of claims for compensation for losses incurred due to the registrant's malicious intent.
Co-efforts of Defendants in Bad Faith Registration and Trademark Infringements
In this case, the defendant, Faerxing Company, submitted an application for the registration of a trademark that is owned by the same shareholders as the defendant, Shenzhen Robam Company. Following a first-instance ruling that required the cessation of the use of the enterprise name, both defendants persisted in utilizing a mark that closely resembles the plaintiff's trademark on identical goods, which raises significant concerns regarding their good faith. The court determined that there were reasonable grounds to believe that the defendants misled the public and sought to capitalize on business opportunities by employing the trademark associated with the alleged infringement for financial gain. Given that the initial application was made with a subjective intent to harm the plaintiff's trademark, the use of the allegedly infringing mark from the time of registration approval until its invalidation was deemed illegitimate, indicating that the exclusive right to register was never valid. Consequently, the actions of both defendants constituted an infringement of the plaintiff's exclusive trademark rights.
Although the trademark was valid at the time the allegedly infringing goods were manufactured, the defendant utilized the "RAOBAN" logo and the slogan "Set sail here for the boss's life" in its retail establishment, indicating a clear intent to infringe upon the plaintiff's exclusive trademark rights, thereby compromising their legal defense.
Conversely, while the defendant, Quanmei Company, was designated as the manufacturer on the energy efficiency label of the allegedly infringing product, their contractual agreement with Shenzhen Ronbam Company confined their obligations to the production of unbranded white machine products. The outer packaging, instruction manual, certificate of conformity, and nameplate logo were all supplied by Shenzhen Boss Tsingshan Company. Consequently, despite the validity of the allegedly infringing mark during the production of the goods, the defendant, Falxing Company, did not participate in joint infringement.
Should you have any inquiries or require any support in this matter, please contact liangwen@zhonglun.com, and we would be happy to assist.
