AUSTRALIAN MADE Won Copycat TM Invalidation

Invalidation Case Represented by HongFangLaw for AUSTRALIAN MADE Company Defeating Copycat Trademark in China

(Disputed Trademark)

Case Fact:

The trademark No. 17863986 owned by PLEYEL MUSICAL INSTRUMENTS PTY LTD (the Respondent) was applied for registration on September 10, 2015, and approved on October 21, 2016, on goods of piano, etc. in Class 15. The export of piano products from China to Australia was detained by Australian customs over the use of the disputed trademark. We representing AUSTRALIAN MADE CAMPAIGN LIMITED (the Applicant) filed the invalidation action against the disputed trademark for conflict with our prior copyright and prior trademark rights. On August 20, 2018, the China National Intellectual Property Administration (CNIPA) supported our claim and the disputed trademark has been invalidated.

During the invalidation proceedings, our agents practiced both the absolute reason clause and the relative reason clause of Trademark Law and adapted as right base the prior copyright of the Applicant’s logo and registered certification trademark.

• The disputed trademark has constituted identical substantiality with the Applicant’s prior copyright, and this is a kind of infringement.
• The disputed trademark’s registration has constituted maliciously squatting prior to a trademark owned by the Applicant.

• The disputed trademark has constituted similarity with eight pieces of registration trademarks owned by the Applicant on similar goods.

Comparison:

• The Respondent’s registration of the disputed trademark was malicious in knowing of the existence of the Applicant’s trademarks.
• The Respondent’s registration of the disputed trademark was deceptive and in violation of the principle of good faith and probably caused misidentification among the public on its quality, origin, etc.
• The Respondent’s registration of the disputed trademark has breached the trademark registration management order and resulted in adverse social effects.

Key Issues:

• Whether the trademarks of both sides have constituted a similar trademark as stipulated by Article 30 of the Trademark LawIn regards to this, the CNIPA held that it would be judged upon the similarities and differences of both trademarks in pronunciation, design, and connotation. Meanwhile, the levels of the affinity of designated goods and the possibility of causing misidentification among the relevant public are also the key elements for decision. The disputed trademark is designated on goods of piano, etc. whereas the cited trademarks are on medicine, furniture, clothing, meat, coffee, plant, soda drink, wine, etc. They differ in the aspects of function, use, etc. and do not belong to identical or similar goods and thus have not constituted a similar trademark as stipulated in Article 30 of the trademark law.
• Whether the disputed trademark’s registration has constituted the circumstance prohibited in Article 32 of the Trademark LawAs stipulated in Article 32 of Trademark Law, “The Application for trademark registration shall not impair the existing prior rights of others.” which, as far as the CNIPA is concerned, include copyright. The Respondent’s unauthorized registration of trademark infringing upon the Applicant’s prior copyright has violated the above law with evidence as follows: 1) The Copyright Certificate shows that the Applicant enjoys the copyright of the AUSTRALIAN MADE logo; 2) The Applicant has registered the AUSTRALIAN MADE logo as the certification trademark in Australia in 1986; 3) Before an application for registration of the disputed trademark, the Applicant has publicized and used the AUSTRALIAN MADE logo in China, which offers the chances for the Respondent to approach works containing such graphic; 4) the disputed trademark graphic is substantially similar to the AUSTRALIAN MADE logo
• Whether the disputed trademark’s registration has constituted the circumstance prohibited in Article 10.1(7) of the Trademark Law.As interpreted by the CNIPA, the “deceptiveness” stipulated in the above law refers to excessive or discordant indications with the facts of trademark designated on goods or services. It is probable to cause misidentification among the public on the traits such as quality, etc. or origin of the goods or services. The disputed trademark has constituted a similar trademark with the Applicant’s logographic in the highly similar aspects of construction, visual effects, etc. Moreover, the very logographic has been registered as a certification trademark by the Applicant on goods in Class 5, 20, 25, 29, 30, 31, 32, 33, by which the fit products can be proved from Australia with sound quality and origin. The disputed trademark’s registration can probably mislead the public in identifying the products designated under the disputed trademark as from Australia, thereby the quality and origin, etc. The disputed trademark’s registration has constituted the circumstance prohibited in Article 10.1(7) of the Trademark Law.

Official Decision:

The disputed trademark shall be invalid.

Significance：

The “deceptiveness” stipulated in Article 10.1(7) of the Trademark Law refers to excessive or discordant indications with the facts of a trademark designated on goods or services. It is probable to cause misidentification among the public on traits such as quality, etc. or origin of the goods or services. In this case, the disputed trademark has constituted a similar trademark with the Applicant’s logographic. More importantly, the Applicant’s trademark is intended for discerning origins. The disputed trademark’s registration can probably mislead the public in identifying the products designated under the disputed trademark as being from Australia, thereby the quality and origin, etc. and making wrong consumption decisions. Such deed belongs to the circumstances of “deceptiveness” stipulated in Article 10.1(7) of the Trademark Law.