Two CPA Winning Cases Selected by Beijing IP Court as Exemplary Cases of Intervention against Bad-Faith Trademark Filing
China Patent Agent (H.K.) Ltd. (CPA) is pleased to share that two of our firm's winning cases were among the 18 cases announced recently by Beijing Intellectual Property Court as Exemplary Cases of Intervention against Bad-Faith Trademark Filing.
In the first case, CPA represented Toei Animation Co., Ltd., a well-known Japanese animation producer, to file an invalidation action against registration of the mark "聖闘士星矢 (Saint Seiya in Chinese) SHENGDOUSHIXINGSHI (Chinese pronunciation of Saint Seiya) plus device" designated for goods such as swimming suits in class 25. CPA assisted Toei with the collection of evidence to show that the device used in the subject mark was in fact Toei's original, independently conceived work, which should fall under the protection of copyright in China. The Court after hearing and examination supported our client's argument, and held that registration of the subject mark has "infringed another party's existing prior right", which is prohibited under Article 31 of the Chinese Trademark Law (2001).
In the other case, our firm was entrusted by Kabushiki Kaisha Shueisha, a well-known Japanese comic book publisher, to file an invalidation action against a registrant who has registered more than 100 marks relevant to Shueisha's comic series Kuroko's Basketball, including the subject mark "黑子的篮球" (Kuroko's Basketball in Chinese) designated for goods such as clothing in class 25. In this case, CPA assisted Shueisha with the collection of evidence to show the bad-faith filing history of the registrant as well as the popularity of relevant comic series and awareness of its Chinese name in China before the date of filing said registration. Decision of the Court was also in favour of our client and the registrant's filing of an identical mark for registration was deemed as taking advantage of the goodwill of the comic series, thus constituting a registered trademark acquired by unfair means, which is prohibited under Article 44 of the Chinese Trademark Law.
