Trademark Information | Bodbog’s Rights Protection, Bodbog Loses the Case

　　The children’s clothing brands “Bodbog” and “Babugou” differ by only one character. So which one is the real deal, and which one is a copy? Recently, the final judgment of the Beijing Higher People’s Court (hereinafter referred to as the Beijing High Court) provided the answer: the original ruling of the Trademark Review Board on the request for invalidation of the trademark was overturned, and all nine trademarks related to “Babugou” should be declared invalid.

　　During the trial, nine trademarks, including “Bodbog,” were all found to have been registered through “other improper means.” The court ruled that the third party in the original trial, Quanzhou Bodbog Children’s Products Co., Ltd. (hereinafter referred to as Quanzhou Bodbog), had applied for and registered a large number of trademarks that are highly similar to well-known trademarks owned by others and were sold online, indicating that it lacked a genuine intention to use these marks, thus warranting their invalidation. Experts point out that current judicial policies on trademark confirmation and authorization generally recognize cases where trademark registration is conducted in bad faith. The judgment in this case serves as a warning against trademark hoarding and reminds enterprises not to rely on the goodwill of others’ well-known trademarks, but rather to devote their efforts to building their own brands.

　　A Single Character Leads to a Dispute

　　The appellee (original plaintiff) in this case is Bodbog (China) Children’s Products Co., Ltd. (hereinafter referred to as Bodbog China), which was established on March 29, 1995 and mainly engages in the production and sale of children’s clothing, shoes and other products. In the course of its business operations, Bodbog China has applied for the registration of multiple word or figurative trademarks related to “Bodbog” in Class 25.

　　Through years of promotion and use, the aforementioned “Bodbog” figurative or word mark of Bodbog China Co., Ltd. has achieved a high level of recognition. From 2003 to 2011, Trademark No. 1210799 of Bodbog China Co., Ltd. was continuously recognized as a Well-known Trademark of Shanghai; in 2012, Trademark No. 4604867 was recognized as a Well-known Trademark of Shanghai.

　　The appellant in this case (the third party in the original trial) is Quanzhou Bodbog Company. Fujian Jinjiang Wantaisheng Footwear and Apparel Co., Ltd. (hereinafter referred to as Jinjiang Wantaisheng Company) successively registered nine “Bodbog” figurative or word trademarks, including No. 1633246. Subsequently, the aforementioned trademarks were transferred to Quanzhou Bodbog Company.

　　Bodbog China believes that the nine trademarks applied for registration by Jinjiang Wantaisheng Company violate the provision in China’s 2001 Trademark Law stating “registration obtained through other improper means.” On May 9, 2017, Bodbog China filed a request for declaration of trademark invalidity with the former Trademark Review and Adjudication Board. On January 23, 2018, the former Trademark Review and Adjudication Board issued a ruling upholding the validity of the trademark rights. Subsequently, dissatisfied with the above ruling, Bodbog China filed an administrative lawsuit with the Beijing Intellectual Property Court.

　　After trial, the Beijing Intellectual Property Court held that Jinjiang Wantaisheng Company owns more than 200 applied-for and registered trademarks, including “Hello Kitty,” “Ultraman,” “Wantaisheng Spider-Man,” “Hello Kitty,” and many other trademarks that are similar to well-known trademarks. In addition to applying for registration of trademarks containing the words or graphics “BABUDOG,” “Bodbog,” or “Babudog,” Quanzhou Bodbog Company has also successively applied for registration of trademarks such as “New Balance Legend” and “Hello Kitty” that contain the names of other well-known trademarks.

　　“Quanzhou Bodbog Company has failed to provide evidence to prove the legitimate reasons for applying to register the aforementioned trademarks and the trademark in dispute in this case, nor has it demonstrated that these trademarks have been put into genuine use. Considering that Jinjiang Wantaisheng Company has sold some of the aforementioned trademarks on the Internet, it can be determined that the registration of the disputed trademark clearly lacks the intention of genuine use and does not possess the legitimacy that a registered trademark should have, thus constituting an improper occupation of public resources and disrupting the order of trademark registration.” The Beijing Intellectual Property Court held that the original Trademark Review Board’s conclusion that the registration of the disputed trademark did not violate the provisions of the Trademark Law was erroneous. Accordingly, the court rendered a first-instance judgment, overturning the challenged ruling and ordering the original Trademark Review Board to make a new ruling.

　　Distinguishing Truth from Falsehood in the Final Judgment

　　Dissatisfied with the first-instance judgment, the former Trademark Review and Adjudication Board filed an appeal with the Beijing High People’s Court, arguing that the date of the application for invalidation of the disputed trademark in this case had exceeded the five-year time limit from the date of approval and registration of the disputed trademark, and that the evidence in this case was insufficient to prove that the disputed trademark was registered by Jinjiang Wantaisheng Company and Quanzhou Bodbog Company through deception or other improper means, thus not violating the relevant provisions of the Trademark Law.

　　Quanzhou Bodbog Co., Ltd. filed an appeal with the Beijing High People’s Court, claiming that it had the intention to use the disputed trademark and had made genuine and lawful use of it, thus there was no improper behavior of hoarding a large number of trademarks; the first-instance judgment erred in ascertaining the facts and applying the law, and requested the court to overturn the first-instance judgment and uphold the challenged ruling.

　　After trial, the Beijing High People’s Court held that Bodbog China Co., Ltd.’s request for declaration of invalidity of the trademark right based on China’s 2001 Trademark Law is not subject to the five-year limitation. Jinjiang Wantaisheng Company has applied for and registered more than 200 trademarks, including those registered around the filing date of the disputed trademark in this case, such as “Hello Kitty,” “Valentiner·MCHEAL,” “Ultraman,” “Wantaisheng Spider-Man,” “Hello Kitty,” “DENLOPO,” and other trademarks that are highly distinctive or well-known, which are similar to others’ trademarks; moreover, Jinjiang Wantaisheng Company has sold some of its registered trademarks on the Internet, demonstrating a subjective lack of genuine intent to use them. Therefore, Jinjiang Wantaisheng Company’s conduct improperly occupies public resources and disrupts the normal order of trademark registration, and the disputed trademark falls under the circumstances specified in Article 41, Paragraph 1 of the 2001 Trademark Law, namely obtaining registration through “other improper means.”

　　During the trial, Quanzhou Bodbog Company argued that it had the intention to use the disputed trademark and had indeed used it in a genuine and lawful manner. After review, the Beijing High People’s Court held that, first, when examining whether the disputed trademark was obtained through “other improper means,” the determination should be based on the subjective intent of the applicant for the disputed trademark—Jinjiang Wantaisheng Company—and its registration behavior; second, Quanzhou Bodbog Company has also applied for and registered more than 100 trademarks, including several that contain the words or graphics “BABUDOC,” “Bodbog,” or “Babugou,” as well as trademarks such as “Xin Bailun Chuanqi,” “Niu Balun Jia Nian Hui NBLAND,” and “Harokaiti,” which are similar to well-known trademarks owned by others. Moreover, the evidence submitted by Quanzhou Bodbog Company fails to demonstrate that its application for and registration of the aforementioned trademarks were justified.

　　Recently, the Beijing High People’s Court issued a final judgment holding that the application for registration of the disputed trademark violated Article 41, Paragraph 1 of the 2001 Trademark Law. The court found that the findings of fact in the first-instance judgment were clear, the application of law was correct, and the trial procedures were lawful, and accordingly dismissed the appeal and upheld the original judgment. (Reporter Feng Fei)