CPA Successfully Invalidates Preemptive Bulk Trademark Registration on Behalf of Japanese Client
China Patent Agent (H.K.) Ltd. (CPA) recently won a trademark invalidation case heard at Beijing Intellectual Property Court (BIPC) on behalf of a Japanese company. The case involved bulk registration of a hundred-plus trademarks associated with a Japanese sports manga series "Kuroko's Basketball", including the mark "黑子的籃球" designated for use on products such as clothing under Class 25.
CPA represented the client to file a request with BIPC for invalidation of the marks, with one of the grounds being the registration having been obtained by "other unjust means" under Article 44.1 of the Chinese Trademark Law. Our attorneys tendered evidence to prove the preemptive bulk registration of the registrant as well as to substantiate that the comics and the Chinese translation thereof had attained certain reputation in China prior to the filing date of the disputed marks, and that the registrant's registration of the exact titles of the comics and names of characters in the comics as the disputed marks was an act of unjust enrichment benefited from the plaintiff's inputs and reputation.
In its ruling BIPC supported the arguments of our side and pointed out that while the title of the works and the names of characters of the works had not yet constituted prior rights in the legal sense, remedy, however, could be sought by invoking "unjust enrichment by other means" under Article 44.1 of the Chinese Trademark Law.
As the registrant of the case has not made any appeal in respect of BIPC's ruling, said ruling has come into force accordingly.
