Japanese company Nowhere squashes TM squatting attempt

文章来源: CHINA INTELLECTUAL PROPERTY NEWS
发布时间: 2021/1/7 14:26:00

  Beijing High People's Court recently made a final judgment on the trademark dispute over No.13493718 figure trademark (trademark in dispute), holding that the trademark in dispute and No.G1062447 figure trademark (cited trademark) are similar marks used on the same or similar goods, and the trademark in dispute had prejudiced the prior copyrights of Nowhere Co., Ltd (Nowhere).


  On November 6, 2013, the trademark in dispute was filed for registration by the Hong Kong-based STD international limited (STD), and was certified to be used on Class 30 goods including honey and instant noodles on June 14, 2016.


  On June 28, 2016, Nowhere lodged an invalidation request to the Trademark Review and Adjudication Board (TRAB) under the former State Administration for Industry and Commerce with supporting evidence including its copyright registration certificate, asserting that the trademark in dispute, similar to the cited trademark, had prejudiced its copyrighted work "Baby Milo device and figure" (work in question).


  On February 22, 2017, the TRAB held that the trademark in dispute was not similar with the cited trademark and had not prejudiced Nowhere's copyrighted work. Therefore, TRAB upheld STD's registration of the trademark in dispute.


  The disgruntled Nowhere then appealed to Beijing IP Court,asserting that the trademark in dispute and the cited trademark are similar trademarks used on the same or similar goods and claiming its ownership of the series of art work of "Baby Milo device". The work in question entered the public domain multiple times after completion, allowing STD to have access to contact and understand the work. Nowhere was convinced that the trademark in dispute is essentially similar with the work in question and had prejudiced the copyright of the work in question.


  Luckily, Nowhere's efforts got paid off. Beijing IP Court revoked the ruling made by the TRAB, holding that the registration of the trademark in dispute had prejudiced Nowhere's copyright of the work in question and the trademark in dispute is similar to the cited one, and ordered China National Intellectual Property Administration (CNIPA) to take a de novo look at the case. (Note: CNIPA inherits the missions of the former TRAB after organizational restructuring of the central government)


  Nowhere and STD both accepted the first-instance judgment. CNIPA, however, stepped up to Beijing High, arguing that certified goods of the trademark in dispute and the cited trademark differ in functions and uses, and the evidence submitted by Nowhere could not prove its copyright ownership over the work in question.


  Beijing High rejected CNIPA's appeal and upheld the first-instance judgment, holding that the certified goods of the two trademarks are highly related in terms of functions and uses, making them similar trademarks used on the same or similar goods. In the meantime, the evidence submitted by Nowhere could prove prior to the registration of the trademark in dispute, the work had been used for registration of multiple trademarks in China, Japan and other countries. Until proven otherwise, Nowhere shall be determined as the copyright owner of the work and may enforce the relevant copyright. Since the trademark in dispute is essentially similar with the work in question, the registration of the trademark in dispute had prejudiced Nowhere's copyrighted work.(by Wang Guohao)


  (Editor Dou Yike)


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