On June 16, 2022, the China National Intellectual Property Administration (CNIPA) issued Ruling No. 商评字 [2022] 第0000177664 in the invalidation proceeding, declaring the “千美树” trademark (Registration No. 43250584) owned by Wang Gangming invalid in respect of the goods “timber, wooden boards,” thereby supporting the invalidation request filed by Guangxi Qianmeishu Wood Industry Co., Ltd.

Beijing Caihe Law Firm was retained by Guangxi Qianmeishu Wood Industry Co., Ltd. to act as the agent for the invalidation applicant in the above trademark invalidation proceeding.

Key highlights of the case:

Article 15, Paragraph 2, of the Trademark Law provides:

Where a trademark applied for registration in respect of the same or similar goods is identical or similar to an unregistered trademark that another person has used earlier, and the applicant, owing to a contractual relationship, business relationship, or other connection with that person beyond those specified in the preceding paragraph, knows of the existence of that other person’s trademark, and that other person raises an objection, the trademark shall not be registered.This provision addresses situations where, before the filing date of the disputed trademark, the applicant has a contractual, business, or other relationship with another party — other than an agency or representative relationship — that would allow the applicant to know of the other party’s trademark, and the applicant preemptively registers a trademark identical or similar to the other party’s earlier-used but unregistered mark on the same or similar goods.

In this case:

According to the enterprise credit report submitted by the applicant, Meng Yicheng is the legal representative, executive director, and manager of the applicant.Vouchers and bank transaction records for travel reimbursements submitted by the applicant show that Meng Yicheng reimbursed the respondent for travel expenses, indicating an employment relationship between the parties.WeChat chat screenshots submitted by the applicant show that the respondent previously worked at the applicant’s company, Qianmeishu Wood Industry, and participated in decision-making work such as wood veneering.Factory photos and photos of “千美树” certification labels submitted by the applicant demonstrate that the applicant had already used the “千美树” trademark in mainland China in the field of ecological boards, wooden boards, and related goods.Information about the respondent’s business and land lease contracts submitted by the applicant shows that, after leaving the applicant’s company, the respondent established Baise Hexin Wood Industry Co., Ltd. and Guangxi Tianyang Lianfu Wood Industry Co., Ltd., serving respectively as executive director, major shareholder, and supervisor, with main business activities including the processing and sale of veneer, high-grade joinery panels, plywood, furniture, wooden doors, and timber processing.Taking into account the respondent’s pre-departure working affiliation with the applicant and post-departure continued operation in the same industry, together with the fact that the disputed trademark’s designated goods “timber, wooden boards” are identical or similar to the goods in which the applicant has consistently used its mark, and considering that “千美树” is not a fixed collocation but a coined term with a certain degree of originality, the respondent’s registration of a trademark identical to the applicant’s mark, without contrary evidence, cannot reasonably be regarded as coincidental.

The respondent, taking advantage of his knowledge of the “千美树” trademark, applied to register it on identical or similar goods, thereby falling within the situation described in Article 15, Paragraph 2 of the Trademark Law — i.e., there existed between the respondent and the applicant a contractual, business, or other relationship through which the respondent knew of the applicant’s trademark and registered a similar trademark on similar goods.