Weekly China Trademark News Updates

November 2, 2022

1. The CNIPA intends to add provisions on trademark revocation ex officio

Recently, the CNIPA issued a letter of reply to the Recommendation No. 2505 of the Fifth Session of the Thirteenth National People’s Congress. The letter mentioned that the CNIPA should continue to strengthen the obligation to use trademarks, make up for its shortcomings on the basis of adhering to the existing registration system, and focus on solving the problem of “emphasizing registration and neglecting use.” The first is to improve the concept of trademark use and highlight the basic status of use. Second, on the basis of retaining the original withdrawal system, study the feasibility of introducing the system of trademark use commitment and active submission of usage descriptions during its validity period. Third, it is proposed to add regulations on trademarks revocation ex officio. If the trademark registrant fails to fulfill the promise of use, fails to submit a description of the use situation according to law, or improperly exercises the exclusive right to use the trademark, the registered trademark can be revoked ex officio.

2. Coexistence agreement can be used as an important basis for determining trademark similarity

The Beijing High Court recently affirmed the lower court decision against Appellant CNIPA and for appellee Bond High Performance 3D Technology B.V. (“Bond”) in an administrative trademark rejection review dispute.

The focus of the dispute in this case is whether the application for the Disputed Mark violates Article 31 of the Chinese Trademark Law. The Beijing High Court held that whether the Disputed Mark and the Cited Mark constitute similar trademarks, and whether the coexistence of the two will cause confusion and misunderstanding to the relevant public, the registrant of the Cited Mark, as a direct interested party, is more concerned than other relevant public. Therefore, when determining whether the coexistence of the Disputed Mark and the Cited Mark on similar goods or services will cause confusion and misunderstanding to the relevant public, the trademark coexistence agreement reached between the Cited Mark’s registrant and the Disputed Mark’s applicant should be considered. On the one hand, in the case of differences between the Disputed Mark and the Cited Mark, the trademark coexistence agreement can be used as a reference factor to eliminate the possibility of confusion. On the other hand, a trademark’s private right should also be considered, that is, a trademark coexistence agreement reflect the transfer and handling of part of the exclusive right owned by the Cited Mark’s registrant. According to the principle of autonomy of will, a trademark registrant should be allowed to freely dispose of its trademark exclusive right.

In this case, the Disputed Mark’s designated goods and the Cited Mark’s approved goods all falls into subclasses 0726 and 0753 part (3), which constitute similar goods in terms of function, production departments, sales channels, and consumers.

The Disputed Mark is a word mark composed of “BOND.” The Cited Mark is a design and work combination mark composed of “BONDTECH” and a design. Although the Disputed Mark “BOND” and the text part “BONDTECH” of the Cited Mark both contain “BOND”, the Cited Mark also contains the text “TECH” and the design part, and there are certain differences between the two in terms of composition elements, text composition, and overall appearance. The trademark coexistence agreement submitted by Bond was issued by the owner of the Cited Mark. If it does not violate laws and administrative regulations, and there is no evidence to show that the coexistence of the Disputed Mark and the Cited Mark could damage the rights and interests of the relevant public, it should be considered as strong evidence to exclude the possibility of confusion. The trademark coexistence agreement determines that the coexistence of the Disputed Mark and the Cited Mark on the same or similar goods is unlikely to cause confusion among the relevant public. Therefore, the Disputed Mark and the Cited Mark do not constitute similar trademarks used on identical or similar goods, and the application for the Disputed Mark does not violate Article 31 of the Chinese Trademark Law. The lower court’s judgment was correct, and the relevant grounds for the appeal submitted by the CNIPA could not be established and should not be supported.

3. The “Oxford University Press in Chinese” mark is not allowed to be registered as a trademark for lack of distinctiveness

The Beijing High Court recently concluded a review of a trademark rejection appeal case to vacate the first instance decision and reject the petition filed by Oxford University Press.

The focus of the dispute in this case was whether the trademark “Oxford University Press” violates Article 11(1)(3) of the Chinese Trademark Law. The first instance judgment found that the Disputed Mark was composed of “Oxford University Press” in Chinese, and that Oxford University Press’s application for registration of the word “Oxford University Press” was in line with commercial practices and customs. The Disputed Mark was distinctive, which can play a role in distinguishing the source of goods and should be registered. Therefore, the first instance judgment revoked the accused decision made by the CNIPA.

The CNIPA refused to accept the first instance judgment and appealed to the Beijing High Court. The Beijing High Court held that the Disputed Mark was consistent with the Chinese enterprise name of Oxford University Press, and was used on the re-examined goods, and the relevant public could easily identify it as a business name, but not as a trademark. The Disputed Mark lacked distinctive features, and its registration violated Article 11(i)(3) of the Chinese Trademark Law. The first instance court erred in applying the law and the CNIPA’s grounds for appeal should be supported.

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