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German Renowned Kitchen Furniture Manufacturer Successfully Shut Bad Faith Trademark Squatter in China
09.14.2020

German Renowned Kitchen Furniture Manufacturer Successfully Shut Bad Faith Trademark Squatter in China

By the early 2020, Beijing Higher People’s Court made a final judgement on a trademark dispute between the renowned German Kitchen Furniture Manufacturer, Germany-based Nobilia Werke J.Stickling Gmbh & Co.kg (“Nobilia”) and a Chinese individual namely “Duan” (“the Defendant”) and ordered that the bad faith Chinese trademark registration of the Defendant should be invalidated.

(Nobilia’s Trademark)
VS

(The Disputed Trademark Registration)

Nobilia owns its reputable international trademark registration for “Nobilia” in Class 20 (No. G798533), and has extended its international trademark registration into China since 2003 and Nobilia has started selling its products in China since 1997.

Subsequently, Nobilia recognized the existence of a trademark squatter registering a “nobilia” trademark in China in Class 9 (trademark registration no. 15350003) (“the Disputed Trademark Registration”).

In 2017, Nobilia took out an invalidation action against the Disputed Trademark Registration. However, in the first instance case, the Trademark Review and Adjudication Broad (“TRAB”) did not rule in favor of Nobilia. Instead, TRAB ruled that the relevant goods designated by the Disputed Trademark Registration and the Nobilia’s trademark in Class 9 and 20 respectively are distinctive and therefore the invalidation action was refused.

Unsatisfied with the TRAB’s decision, Nobilia appealed to the Beijing IP Court. Without surprise, Nobilia encountered another frustration in the Beijing IP Court which had reconfirmed the TRAB’s reasoning and decision and declined to allow the invalidation action.

As a last resort, Nobilia appeal to the Beijing Higher People’s Court, which being the final stage in the Chinese legal procedural system entertaining trademark invalidation cases.

In favor of Nobilia’s position, the Beijing Higher People’s Court had adopted a more liberal and purposive approach in awarding protection to Nobilia as against trademark squatters. The Beijing Higher People’s Court accepted that Nobilia has acquired substantial reputation in China and that the Defendant has registered the Disputed Trademark Registration in bad faith. In particular, Beijing Higher People’s Court ruled that the behavior of the Defendant had triggered Article 44 of the Chinese Trademark Law, which is to strike against “obtaining registration of a trademark by fraudulent means or other illicit means”.

The recent Chinese court new department has witnessed the increasing recognition of the reputation of foreign trademark owners who have encountered bad faith trademark squatters in China.

Benny Kong & Tsai © 2020
 

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