In China, goods and services in different classes and sub-classes* are considered dissimilar, subject to limited exceptions specified in the classification book. Brand owners often find such rigidity a hurdle in their actions against squatters when their existing trademark registrations do not cover the sub-class(es) which the infringing marks are in.
We have however been able to surmount such hurdle for our clients. We are happy to share three of our recent success stories and highlight how brand owners can ace in cross-class and cross-sub-class actions against squatters.
I. SUCCESSFUL CROSS-CLASS OPPOSITION BASED ON DISTINCTIVENESS AND ORIGINALITY OF BRAND OWNER’S MARK AND APPLICANT’S BAD FAITH
We filed an opposition on behalf of an international luxury cosmetics house against a mark comprising of its brand name plus the word “BEAUTY” in English and Chinese on cosmetic utensils and other goods in Class 21.
We argued that the opposed mark fully incorporates the client’s prior registrations which
are distinctive and original, and that the Applicant has filed many other trademarks which are copies of other marks of certain originality or fame (some of which have already been opposed). The CNIPA held that such behaviours constituted obtaining trademark registrations with deceptive or improper means. Despite the client did not own any prior registration for its English brand name in the relevant sub-class or its Chinese brand name in the relevant class, we managed to secure a favourable opposition decision which was central to our client’s protection of its house marks.
