| Disputed Mark | Cited Mark |
 |
 |
The CNIPA and Lianfeng Song appealed against the first-instance administrative judgment over an invalidation of the "Miaojie in Chinese" mark. On May 22, 2023, the Beijing High Court made a final judgment, rejecting the appeal and affirming the original judgment.
The court found that in view of the fact that the invalidation petitioner Tuo Pu Company filed an invalidation against the Disputed Mark on January 7, 2020, and it has been more than five years since the Disputed Mark's approval date. The issue in this case is whether the Disputed Mark achieves the well-known status and is not subject to the five-year time bar because of its bad faith.
The Disputed Mark "Miaojie in Chinese" and the Cited Mark "Miaojie" in Chinese are highly similar in character composition and overall appearance, except for the difference in the traditional and simplified characters of "Jie in Chinese." The Disputed Mark constituted a copy and imitation of the Cited Mark. In addition, although "carpet, bathroom anti-slip mat, anti-slip mat, etc." approved for use by the Disputed Mark and the "saran wrap, etc." approved for use by the Cited Mark belong to different classes in the CNIPA Classification, they are all daily necessities, and have a high degree of overlap in consumer groups and other aspects, and have a certain associations. Lianfeng Song, as an operator of daily necessities, is an operator in the same industry as Tuo Pu Company, and his application for registration of the Disputed Mark is basically identical to the Cited Mark shows obvious bad faith. Therefore, as the right holder of the Cited mark, Tuo Pu Company has the right to file an invalidation against the Disputed Mark without the five-year time bar.
Under the circumstances that the Cited Mark has constituted a well-known mark and the Disputed Mark constituted a copy or imitation of the Cited Mark. The relevant public may easily think that the Disputed Mark and the Cited Mark are associated, which will weaken the distinctiveness of the Cited Mark or improperly use the market reputation of the Cited Mark. Therefore, the Disputed Mark shall be declared invalid on all goods approved for use.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.