"Babu Bean" and "Babu Dog" two children's clothing brands are only one word difference, who is Li Kui and who is Li Ghost? Recently, the final judgment of the Beijing Municipal Higher People's Court (hereinafter referred to as the Beijing High People's Court) gave the answer, that is, the request for trademark invalidation of the original Trademark Review and Adjudication Board was revoked, and all nine "Babu dog" related trademarks should be declared invalid.

During the trial, all nine trademarks such as "Babu Gou" were found to have been registered by "other improper means", and the court ruled on the grounds that the third party of the original trial, Quanzhou Babudou Children's Products Co., Ltd. (hereinafter referred to as Quanzhou Babudou Company), applied for the registration of a large number of trademarks similar to those with high popularity with others, and sold them on the Internet, which did not have the true intention of use and should be invalidated. Some experts pointed out that at present, in the judicial policy of trademark confirmation authorization, there are similar situations that determine that trademark registration is bad faith, and the judgment of this case is a wake-up call to combat trademark hoarding, and also reminds enterprises not to cling to the goodwill of other people's well-known trademarks, and should invest energy in building their own brands.

A word difference leads to a dispute

The appellee (plaintiff in the original trial) in this case is Babudou (China) Children's Products Co., Ltd. (hereinafter referred to as Babudou China Company), which was established on March 29, 1995, mainly producing and selling children's clothing, shoes and other products. In the course of its business, Babudou China applied for the registration of a number of word or figurative trademarks related to "Babudou" on Class 25 goods.

Through years of publicity and use, the above-mentioned "Babudou" graphic or word trademark of Babudou China Company has a high popularity. From 2003 to 2011, the No. 1210799 trademark of Babudou China Company was continuously recognized as a famous trademark in Shanghai; In 2012, Trademark No. 4604867 was recognized as a famous trademark in Shanghai.

The appellant (the third person in the original trial) in this case was Quanzhou Babudou Company. Fujian Jinjiang Wantai Sheng Shoes and Clothing Co., Ltd. (hereinafter referred to as Jinjiang Wantai Sheng Company) has registered 9 "Babu Dog" graphic or word trademarks including No. 1633246. Subsequently, the above trademark was transferred to Quanzhou Babudou Company.

Babudou China Company believes that the nine trademarks applied for registration by Jinjiang Wantai Sheng Company violated the situation of "obtaining registration by other improper means" stipulated in China's 2001 Trademark Law. On May 9, 2017, Babudou China filed a request for trademark invalidation with the former Trademark Review and Adjudication Board. On January 23, 2018, the former Trademark Review and Adjudication Board ruled to maintain the validity of the trademark right. Subsequently, Babudou China filed an administrative lawsuit with the Beijing Intellectual Property Court against the above ruling.

After trial, the Beijing Intellectual Property Court held that Jinjiang Wantai Sheng Company has more than 200 applications and registered trademarks, including "Hello Kitty", "Superman Ultraman", "Wantai Sheng Spider-Man" and "Haro Kitty" and many other trademarks similar to other well-known trademarks. In addition to applying for the registration of trademarks such as "BABUDOG", "BABUDOG" or "BABUDOG", Quanzhou Babu Bean Company has also applied for the registration of trademarks such as "New Balance Legend" and "Harrow Katy" containing the well-known trademark names of others.

"Quanzhou Babudou Company did not provide evidence to prove the legitimate reasons for the application for registration of the above-mentioned trademark and the disputed trademark in the case and whether it was put into real use, considering that Jinjiang Wantai Sheng Company sold some of the above-mentioned trademarks on the Internet, it can be determined that the registration of the disputed trademark obviously lacks the true intention of use, does not have the legitimacy that a registered trademark should have, and is a situation that improperly occupies public resources and disrupts the order of trademark registration." The Beijing Intellectual Property Court held that the original Trademark Review and Adjudication Board had erroneously concluded that the registration of the disputed trademark did not violate the provisions of the Trademark Law, and accordingly rendered a first-instance judgment, revoked the ruling in question, and requested the former Trademark Review and Adjudication Board to make a new ruling.

The final judgment is true and false

The original Trademark Review and Adjudication Board appealed to the Beijing High Court against the first-instance judgment, holding that the application date for the invalidation of the disputed trademark in the case had exceeded five years before the date of approval and registration of the disputed trademark, and the evidence in the case was insufficient to prove that the disputed trademark was obtained by Jinjiang Wantai Sheng Company and Quanzhou Babudou Company by deception or other improper means, and did not violate the relevant provisions of the Trademark Law.

Quanzhou Babudou Company appealed to the Beijing High Court, claiming that it had the intention to use the disputed trademark, and had made a genuine and legal use of it, and there was no improper act of hoarding a large number of trademarks; The first-instance judgment found that there were errors in the facts and applicable law, and requested the court to revoke the first-instance judgment and uphold the ruling.

After hearing, the Beijing High Court held that Babudou China filed a request for invalidation of trademark rights in accordance with China's 2001 Trademark Law, and was not subject to the five-year time limit. Jinjiang Wantai Sheng Company has applied for and registered more than 200 trademarks, including "Hello Kitty" and "Valentiner Valentiner" that applied for registration around the filing date of the disputed trademark. MCHEAL", "Superman Ultraman", "Wantai Sheng Spider-Man", "Haro Kitty", "DENLOPO" and other trademarks similar to those with strong distinctiveness or high popularity with others; In addition, Jinjiang Wantai Sheng Company sold some of its registered trademarks on the Internet, subjectively lacking the intention of true use. Therefore, Jinjiang Wantai Sheng's behavior improperly appropriated public resources and disrupted the normal order of trademark registration, and the disputed trademark fell under the circumstance of obtaining registration by "other improper means" as referred to in the first paragraph of Article 41 of the 2001 Trademark Law.

During the trial, Quanzhou Babudou Company claimed that it had the intention to use the disputed trademark and made a genuine and legal use. After hearing, the Beijing High Court held that, firstly, to examine whether the disputed trademark was registered by "other improper means", it should be judged based on the subjective intention of the applicant of the disputed trademark, namely Jinjiang Wantasheng Company, and its registration behavior. Secondly, Quanzhou Babu Bean Company has also applied for and registered more than 100 trademarks, including a number of trademarks containing the words or graphics of "BABUDOC", "Babu Bean" or "Babu Dog", as well as "New Bailun Legend", "Newbarun Carnival NBLAND" and "Haro Kettlety" and other trademarks similar to other trademarks with high visibility, and the evidence submitted by Quanzhou Babudou Company cannot prove that its application and registration of the above trademarks have a valid reason.

Recently, the Beijing High Court rendered a final judgment, holding that the application for registration of the disputed trademark violated the first paragraph of Article 41 of the 2001 Trademark Law, and the first-instance judgment found that the facts were clear, the law was correctly applied, and the trial procedure was lawful, and the appeal was dismissed and the original judgment was upheld. (Reporter Feng Fei)