Germany-based Nobilia Werke J.Stickling Gmbh & Co.kg, a world-renowned fitted kitchen, began to sell its products under the Nobilia brand in China in 1997. In 2017, it brought a case against a person surnamed Duan over a nobilia trademark registered by the said person. Recently, Beijing High People's Court made a final judgment on the dispute, ruling in favor of the high-end kitchen maker.
The No. 15350003 trademark "nobilia" （trademark in dispute） was filed by Duan on September 16, 2014, and would be certified to be used on Class 11 goods such as electric heaters on May 7, 2017. On June 27, 2017, Nobilia lodged an invalidation request to the Trademark Review and Adjudication Board （TRAB） under the former State Administration for Industry and Commerce, claiming the trademark in dispute was similar to the company's No.G798533 trademark "Nobilia" （cited trademark） which was approved to be used on Class 20 goods such as furniture and infringed its prior "NOBILIA" trade name right in bad faith by copying Nobilia's renowned trademark, which passed the test of unfair competition.
TRAB held that the trademark in dispute is not similar with the cited trademark and Nobilia's evidence cannot support Nobilia's other claims, prompting a decision to uphold the trademark in dispute.
The disgruntled Nobilia then brought the case to Beijing IP Court and requested invalidation of the trademark in dispute, but would only experience frustration again by hearing the same reasoning from the bench.
Nobilia then appealed to Beijing High People's Court against CNIPA, the current higher-up of TRAB. In addition to the invalidation request claiming similarity, Nobilia also submitted other relevant evidence including the cited trademark has high reputation, Duan was in bad faith by registering the trademark in dispute, and evidence exposing Duan and his Shengzhou JOHS Electric Appliance Company's repeated acts of squatting some renowned trademarks, which triggers Article 44 of the Chinese Trademark Law, "obtaining registration of a trademark by fraudulent means or other illicit means".
Beijing High People's Court held that Duan has registered 24 trademarks and his JOHS Company 27. On top of the trademark in dispute, Duan has also registered trademarks including "欧萨帝" "圈圈锅" "SAAEG" "勃朗格" "ZEYKO" "维特利尔" which are similar to other famous trademarks. Duan could not give reasonable explanations over his acts, making it hard to believe he was in good faith when registering the trademark in dispute. His acts of registering a number of trademarks is beyond the normal business need, disturbing the normal trademark registration and management order. The registration of the trademark in dispute "is obtained by fraudulent means or other illicit means".
In this connection, the Court revoked the first-instance ruling and CNIPA's decision and supported Nobilia's invalidation request.（by Wang Jing）
（Editor Jiang Shuo）
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