Decision about Trademark No.12124800 “Lipovitan” on Invalidation
Applicant: TAISHO PHARMACEUTICAL CO.，LTD.
Agent: Beijing Lindaliu IP Office (Ltd)
Against Party : GUO ZHEN YU
Agent: Bejing Fangdao IP Agent Ltd
The applicant applied for trademark invalidation on June 28, 2016 to the TRAB on the mark “” of No.12124800. After We (the board) received the application, in accordance with Article 6 of Trademark Examination Rules, a group had united to process the invalidation, now the examination is done.
Grounds of applicant: 1. Before the disputed mark submit the application, applicant＇s "力保健Lipovitan" trademark has a high popularity and influence in China and the world for its excellent quality and good reputation. It has been widely known to the relevant Chinese public and has reached the level of well-known trademark. Disputed mark obviously is copy, imitate applicant’s mark, easily mislead the public, and cause the interests of the applicant to be damaged. The register of disputed mark violate Article 13 section 3 of Trademark Law. 2. Disputed mark is similar with applicant’s mark in using on similar goods. 3. The against party is an executive in large pharmaceutical company. It means he is a competitor for applicant in the same business. Besides, both against party and the leader of applicant are the top leader of WORLD SELF-MEDICATION INDUSTRY. Through this relationship, he was aware of this mark and register it with pure evil intention. The registration of the disputed trademark violates the provisions of Article 15 (2) and Article 32 of the Trademark Law in relation to "It’s forbid to use improper means to register other party’s mark, especially the mark already have a certain impact". 4. The against party copy other popular trademarks in large scale maliciously. It’s very obvious that he intends to improper use other companies’ business reputation. The registration of the disputed trademark violates the provisions of Article7, 10 section2 (7) (8)and Article 44 section1 of the Trademark Law. According to above provisions, the applicant request disputed mark being invalid.
The applicant submit following evidence: Introduce information about applicant and production of mark “力保健 Lipovitan”; Information about trademark use condition; Advertising information about applicant and their products; Relative decision, judgement; Trademark register record; Other foreign brands introduce information.
The against party haven’t reply within limit period.
1. Disputed mark was applied in January 31, 2013, designated in class 35 around advertising and import and export agent, etc. It’s registered in January 14, 2016, and published in No.1487 Trademark gazette, its valid period from July 28,2014 to July 27,2024.
2. Cited mark was applied in January 28,2013, designated in class 35 around drug retail or wholesale service, medicinal preparations retail or wholesale service,etc. , Its valid period from July 21,2014 to July 20,2024.
3. The against party applied and registered more than 170 trademarks in several goods/services, including famous trademark “Bausch&Lomb”and“NatureMade”.
Above fact could be proved by Trademark file.
We think that, the spirit of Article 7 in Trademark Law already reflected in specific terms, so will judge this case by applicable provisions in Trademark Law.
After the panel discussed, we think, there are following focus questions:
1. Whether disputed mark similar with cited mark in identical or similar goods.
In this case, disputed mark“Lipovitan”totally same with cited mark in letter composition, calling, they are definitely similar mark. Disputed mark designated in advertising and import and export agent, etc. And cited mark designated in drug retail or wholesale service, medicinal preparations retail or wholesale service,etc. They have some connection in the aspect of service object, service characteristics. Besides, cited mark has strong originality and prominence. The against party not only registered the same mark in same class, but also applied and registered more than 170 trademarks in several goods/services, including famous trademark “Bausch&Lomb”and“NatureMade”, his intention hardly be thought as good. If they are used in similar services, will mislead the public, and they are similar marks, which is already violate the Article 30 of Trademark Law.
2. Whether the registration of the disputed trademark violates the provisions of Article 15 (2) and Article 32 of the Trademark Law in relation to "It’s forbid to use improper means to register other party’s mark, especially the mark already have a certain impact" .
Above described mark especially refers to an unregistered mark, in terms of applicant already registered its mark, and we already protect him by using the Article 30 in Trademark Law. No matter cited mark is famous or not, the conclusion will be the same. Therefore, this case would not apply to the provisions mentioned in above paragraph.
3. Whether the registration of disputed mark violate of provisions of Article 10 section 1 (7) (8).
The applicant proposed disputed mark violate above provisions, but the services they designated don’t be exaggerate, it means the public will not be mislead. They not violate those provisions. The bad impact mentioned in the provisions refer to the graphic, text or other constituent elements of the trademark itself has negative effects on the social and public interests and public order of our country's political, economic, cultural, religious and ethnic groups. For this case, disputed mark don’t fit above circumstances, this invalidate reason can’t be admitted.
4. Whether the registration of disputed mark violate of provisions of Article 44 section 1 .
Article 44 Section 1 in Trademark Law : “a trademark was acquired by fraud or any other improper means”refer to the applicant of disputed mark in order to acquire the trademark right, using the methods of make up or conceal the truth, submit a forged application or other documents to administrative authority. Or based on unfair competition, the purpose of seeking illegal interests, register a mark maliciously. Except violate the rules of Article 13, Article 15 and Article 32 of the Trademark Law, the act of malicious registration based on unfair competition also refer to in violation of the principle of good faith. Evidence of the case provided by applicant to provide are not enough to prove the above acts, so the applicant's claim can not be established.
And, all the other grounds are lack of facts and legal basis.
According to Article 30, Article 45 section 1 and 2, and Article 46 of Trademark Law, we give following decision:
The disputed mark is invalid now.
The parties who refuse to accept the this decision may apply for a prosecute to Beijing Intellectual Property Court within 30 days after receiving the decision, and submit the copy of indictment to us simultaneously or within 15 days, or give a further notice in write form later.