The three-year long trademark dispute over the trademark "蝶翠詩" between Japanese company DHC and Guangdong Yiming Pharmaceutical Co., Ltd. (Guangdong Yiming Company) finally came to an end. Beijing High People's Court recently rejected the appeal from Yiming, upholding the ruling of the Trademark Review and Adjudication Board (TRAB) invalidating the No. 6378545 trademark "蝶翠詩" (trademark in dispute). According to No. 1632 trademark notice issued by the Trademark Office (TMO), the registration of the trademark in dispute on all goods is declared invalid.
The registration of the trademark in dispute was filed by Yiming on November 14, 2007, and was approved for registration on August 7, 2015, certified to be used on Class 35 services including goods display, sample distribution, outdoor advertising and advertising communication after the trademark opposition and opposition review procedure. The trademark exclusive right is valid from July 7, 2010 to July 6, 2020. On September 24, 2015, DHC lodged an invalidation request against the trademark in dispute to the TRAB alleging that Yiming applied for the registration of the trademark in dispute in an improper way, an act of squatting international famous brands in bulk, would cause confusion between the trademark in dispute and DHC among the general public.
According to the evidence submitted by DHC to the TMO at the trademark review stage, in addition to the "蝶翠詩" trademark, Guangdong Yiming Company also applied for over 100 applications for the registration of trademarks including "无比滴""缇诗娜""拉夫·劳伦""兰芝LANEIGE""RALPH LAUREN""婵真""大弗水".
Yiming argued that it is a credible company established according to law. The trademark in dispute is a prior trademark registered by Yiming according to law. The facts and reasons for invalidation declared by DHC are untrue. The act that DHC maliciously invalidated its trademark should be stopped.
After examination, the TRAB made a ruling on March 15, 2017 claiming that the trademark in dispute itself is not deceptive and will not cause the public to misidentify the characteristics or origin of the product, but the registration of the trademark in dispute clearly exceeds the normal production and operation needs of Yiming, violates the principle of honesty and good faith, and corrupts the regular order of trademark registration. This act has constituted the situation of obtaining trademark registration by other improper means in the provisions of the current Trademark Law of China. Accordingly, the trademark in dispute was invalidated.
Yiming was evidently disgruntled with the ruling of the TRAB and subsequently brought the case to the Beijing IP Court. The IP Court held that Yiming applied for registration of over 100 trademarks on multiple goods or services including the trademarks in dispute and many other trademarks similar to other well-known trademarks. The act to copy and plagiarize other trademarks with certain reputation has corrupted the normal order of trademark registration management, violated the principle of public order and good customs which is detrimental to the market order of fair competition. The registration application of the trademark in dispute conforms to the situation "obtaining trademark registration by deception or other improper means" in the provisions of the current Trademark Law of China. In this connection, the court dismissed Yiming's complaint in its first-instance judgment.
Guangdong Yiming Company refused to call it a day and appealed to Beijing High. After hearing, Beijing High dismissed the appeal and upheld the original judgment.
（by Wang Guohao）
(Editor Shao Jingjing)
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