Who moved my curry? the Impact of Bad Faith on Trademark Similarity Determinations – A Typical HOUSE Curry Trademark Opposition Case Study | Linda Liu & Partners

[co-authors – Yan Wang and Binghui Wang]

Foreword

It is well known that one of the key questions in trademark registration authorization and affirmation cases is whether a mark is similar to another prior conflicting mark on identical or similar goods. The determination of the similarity of the marks is in principle the official decision Guidelines for Trademark Examination and Testing which is newly updated this year. In practice, however, as the official guideline cannot cover all possible scenarios, it is frequently necessary to carry out a case-by-case analysis in order to determine whether the marks are similar or not.

Along with the growing number of trademark applications in China year by year, malicious imitation trademarks continue to emerge, and malicious imitation methods are constantly updated. There are instances of malicious imitation that cannot be fully regulated in the review process under previous review guidelines.

This article introduces two of the “Typical Trademark Opposition, Examination and Arbitration Cases of 2020” – the “好待百” and “梦多加喱” cases to discuss the impact of the bad faith of the plaintiff on trademark similarity determinations in practice.

I.Memory

The above typical cases are objections that we have filed on behalf of HOUSE FOODS GROUP INC. (hereinafter referred to as “HOUSE”) against the two trademarks “好待百” and “梦多加喱” applied by Nanjing Yaosheng Commercial and Trading Co., Ltd. HOUSE is a well-known Japanese company. Curry, seasoning, snack food and health food are its main products. Among these, its curry products hold a significant market share. Since entering the Chinese market, HOUSE has won many awards for its products, and its brands such as “好侍”, “百梦多” and “味嘟嘟” have become familiar to the Chinese food industry and consumers. Chinese consumers. . With the expansion of the influence of the HOUSE brand in recent years, malicious imitations and even counterfeits have appeared. The opposing party in this case, Nanjing Yaosheng Commercial and Trading Co., Ltd, applied for four trademarks of “好待百梦卶加喱”, “好待白梦卶加喱”, “好待百”, “梦多加喱” successively which imitated our client’s “好侍” and “百梦多” trademarks, and the opposing party also requested other people’s well-known trademarks, which seriously impaired the rights of other trademark owners. prior legal rights, including HOUSE.

During the opposition preparation phase, we investigated the opposing party and discovered that the legal representative of the opposing party, the natural person YE MF has set up a sole proprietorship. Another natural person, Ye MB, ran a business under the same trade name “Riyi” – “Nanjing Jiangning District Riyi Food Sales Center”, and Ye MB also maliciously registered a number of well-known trademarks. known to other people. At the same time, Ye MB and another natural person Ye MS, which was found in HOUSE’s previous investigation to have repeatedly requested the trademarks that copied HOUSE’s trademarks “好侍” and “百梦多”, and also invested in and established Nanjing Huidefeng Food Trade Co. Ltd. And the malicious imitation applications of Ye MB, Ye MS and the opposing party “Nanjing Yao Sheng Trade Co. Ltd.” were all entrusted to Jinan Suying Intellectual Property Agency Co. Ltd., which can hardly be explained as a coincidence, and there is a great possibility that they are related to each other. Therefore, in these opposition cases, we have claimed a priority right to the trademarks “好侍” and “百梦多” and their popularity as well as the malicious imitation of the opposing party, including its malicious registration of a number of other well-known brands in addition to HOUSE, their possible connection to other malicious registrants and the fact that they belong to the same industry as HOUSE.

In this case, we encountered some difficulties in asserting that the marks are “identical or similar marks on identical or similar goods”, as specified in Article 30 of the Trademark Law. As shown in the comparison table of the two opposing marks and the cited marks, there are clear differences between the two marks in terms of word composition, pronunciation, meaning and general appearance. If the two opposing marks are considered in isolation, they will generally not be determined in the same way as the cited marks.

Specifically, when comparing the opposite mark “好待百” with the cited mark “好侍”, we can see that they are identical only in the Chinese character “好” meaning “good that is frequently used in brands. The degree of similarity between the two is low. Comparing the other opposite mark “梦多加喱” with the cited mark “百梦多”, the first character of the two is different, and they only share the same element “梦多”. The degree of similarity is also low.

However, if the two opposing brands are combined, the conclusion is different. In fact, the cited marks “好侍” and “百梦多” are frequently used together in practice. As the main curry brand of HOUSE company, “百梦多” has a very high relevance compared to its trade name in Chinese “好侍”. The two opposite marks “好待百” and “梦多加喱” are the split and combination of the three elements of “好侍”, “百梦多” and “咖喱”. The opposing party obviously split them on purpose with the knowledge of the respondent trademarks in order to escape the examination of similarity. Since the opposing party also applied for the trademarks “好待百梦卶加喱” and “好待白梦卶加喱”, we have every reason to believe that the opposing party’s application for the trademarks “好待百” and “梦多加喱” is also in bad faith and also aims to combine the two marks used after registration in order to achieve its illegitimate goal of imitation and free circulation on the mark “好侍百梦多by HOUSE. Therefore, the two opposing marks should not be considered in isolation, but should be considered together and found to be similar. Finally, the examiners supported our claims above and decided that the two opposing marks were similar to the two cited marks and disapproved the registration of the two opposing marks under Section 30 of the Trademark Act.

II. Impact of applicant’s bad faith on similarity determinations

As the case mentioned above is very typical, the examiner specifically wrote an article presenting this case which was published in Chinese Intellectual Property Journal. In his comments, he pointed out: “For the behavior of applying for trademark registration by modifying or dividing other people’s well-known trademarks, the examination is no longer isolated, which ignored the internal link between the marks. Instead, the review is conducted comprehensively considering the series of trademarks filed with malicious intent and combining the opposition cases to fully consider factors such as the similarity of the marks of the two parties, the popularity of prior trademarks and the subjective effects intentions of the opposing party in order to prevent the act of taking advantage of well-known trademarks and to ensure justice and fairness in the outcome of the trial. The comment clarifies that if a trademark applicant is in bad faith, the CNIPA will no longer examine the trademark in isolation, but will consider the series of trademark applications filed by the bad faith applicant as a whole, in order to effectively curb such behavior. of “free riding”.

In fact, the examination of the plaintiff’s subjective malice is also mentioned in the new Guidelines for Trademark Examination and Testing. The chapter on examination and trial of identical and similar marks now includes section 3.2.4 on examination of the subjective intention of the trademark applicant, which states that “The subjective intention of the trademark applicant must be taken into account in determining whether the trademark is likely to cause confusion as to the source of the goods. When the trademark applicant has obvious malice and the other factors are the same, it is more likely to confuse the public.” This section provides a guiding basis for determining the similarity of malicious imitation of marks. This is very favorable for the prior right holder to invoke Article 30 in appeal procedures such as opposition or invalidation against malicious marks which replace, divide or combine the marks of the prior right holder. In some circumstances, the success or failure of proof of malicious intent may even have a direct impact on the outcome of the case. At the same time, considering the consistency of subjective malice, the examiner can link multiple malicious trademark applications from the same applicant, which will save examination resources and avoid conflicting determinations.

In practice, malicious imitation by splitting and combining is not limited to word marks. Trademarks of devices can also be imitated in this way. The case shown in the table below is a split mark of prior marks from another entity. It is obvious that when these device marks are considered in isolation, they do not constitute marks similar to the earlier mark. All these trademarks are thus registered. The owner of the prior right then filed invalidations.

In the invalidation proceedings, the Examiner recognized the Applicant’s claim of similarity to the mark filed by the applicant and determined that the registration of the contested mark had been obtained by improper means, i.e. a malicious imitation.

From the above, it can be seen that splitting or combining other people’s prior well-known marks has become a relatively common means of malicious imitation at present, and these malicious marks are difficult to discover in the review process. Owners of prior rights often need to discover malicious imitations of marks quickly through routine surveillance, then defend their rights through subsequent opposition and invalidation proceedings.

Closing

In March 2021, China National Intellectual Property Administration (CNIPA) issued the notice Special Campaign Plan to Combat Malicious Preemptive Trademark Registrationfocusing on the special campaign against the malicious pre-emptive application of brands, which has achieved excellent results. Trademark examination and testing guidelines, which came into force on January 1, 2022, also continues this spirit by imposing stricter regulations on malicious applications. It is hoped that by rigorously scrutinizing trademarks that divide or combine the marks of others with subjective malice in trademark oppositions, invalidations and other redress proceedings, the legitimate rights of rights holders prior rights will be better protected and a market environment characterized by fair competition, honesty and reliability, as well as the legal environment, will be improved.

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