Citing trademark "SWAROVSKI" brand designated on the "jewel" products have been known by the relevant public controversy trademark "施崋洛及图" constitute the cited trademark copy and imitation; There is a certain correlation between the services such as wedding photography used in the approved trademark in dispute and the commodities such as gemstones used in the approved trademark cited; The original respondent has the subjective intention to attach the applicant's well-known trademark in the actual use, which has been confirmed in the effective judgment of the court. The use of the trademark in dispute in the designated service is easy to make consumers think that the designated service comes from the applicant or has a close relationship with the applicant, which damages the rights and interests of the applicant.

No. 3746575 "施崋洛及图" trademark for invalidation

1. Case introduction

The trademark no. 3746575 "施華洛及图" (hereinafter referred to as the trademark in dispute) was applied for registration by Yang Yiguo (the original respondent of the case) on October 9, 2003, and was approved to be registered on January 21, 2006. It is approved to be used in Class 41 "Wedding photography, wedding video, photography" and other services, and is renewed within the validity period of the present exclusive right; In 2019, the trademark Office approved the transfer to Beijing Artiz Princess Culture Development Co., LTD., which is the respondent of the case.

The applicant filed an application for invalidation of the disputed trademark on April 27, 2018, mainly for the following reasons:

(1)   The applicant presented new reasons and new evidence in the case and did not violate the rule of ‘non bis in idem’.

(2)   The applicant is the internationally renowned crystal jewelry suppliers, and the applicant "SWAROVSKI" brand has won a high reputation and known for the consumer before the disputed trademark application. The disputed trademark is a malicious copy and imitation to the applicants, no. 385013 "SWAROVSKI" brand (hereinafter referred to as the "trademark), and it has damaged the interests of the applicant. In accordance with the provisions of Article 13, Paragraph 2, and Article 41, Paragraph 1 of the Trademark Law of 2001, to request the declaration of the disputed trademark as invalid.

In this regard, the original respondent said: the trademark used in the wedding photography industry has a relatively high popularity, the designated service of the disputed trademark, the approved use of goods, and the cited trademark approved products do not be recognized as similar goods and services. There is no malicious intention of copying or imitating others' brands in the dispute. The original respondent requested that the registration of the disputed trademark be maintained.

2. Case analysis

   (1) Compared with the facts and reasons in the decision of invalidation no. 30947 of the commercial assessment [2010], the following main reasons are added:

1) the trademark in dispute registered by the respondent violates the provisions of Paragraph 1 of Article 41 of the Trademark Law of 2001.

2) Added the evidence materials to prove the popularity of the cited trademark and the subjective intention of attaching the trademark in the actual use. Therefore, the National Intellectual Property Administration applies the exception of the ‘Protection against double jeopardy’ in this case and accepts this case on the basis of new facts and grounds.

(2)  Paragraph 1 of Article 45 of the Trademark Law stipulates that the time limit shall be five years from the date of registration of a trademark for an applicant to declare invalid the registration of a disputed trademark as prescribed in Article 13 of the Trademark Law. However, for malicious registration, the owner of a well-known trademark shall not be subject to a time limit of five years.

According to the evidence submitted by the applicant and the fact found out by the National Intellectual Property Administration, before the dispute applicant apply for registration, the trademark "Swarovski" have a high popularity and dozens of well-known domestic media such as newspaper, website, and publicity have reported it.

Therefore, this case finds that the cited trademark is already well known to the public for its designated use on "jewelry" goods, and that the disputed trademark constitutes a copy and imitation of the cited trademark. There is an absolute correlation between the services such as wedding photography used in the approved trademark in dispute and the commodities such as jewelry used in the approved trademark cited. The original respondent has the subjective intention to attach the applicant's well-known brand in the actual use, which has been confirmed in the effective judgment of the court. The use of the brand in dispute in the designated service is easy to make consumers think that the designated service comes from the applicant or has a close relationship with the applicant, which damages the rights and interests of the applicant. Therefore, this case determines that the registration of the trademark in dispute violates the provisions of Article 13, Paragraph 2, of the Trademark Law of 2001.

3. Typical meaning

1.  Application of the principle of ‘non bis in idem’ in the evaluation of cases

Article 62 of the Regulations on the Implementation of the Trademark Law stipulates that if the Trademark Review and Adjudication Board have made a ruling or decision on the application for trademark review and adjudication, no one may apply for review and adjudication again based on the same facts and reasons. The "non bis in idem" principle is the embodiment of the res judicata of an administrative act. The adjudication made by the National Intellectual Property Administration should be limited by this principle. The application of the above articles is mainly based on "the same facts and reasons". But in the administrative adjudication, if "new facts and reasons" appear, it will not be restricted by this principle. New facts shall be those which are proved by new evidence, which shall be new evidence discovered after the original ruling or decision, or which is indeed evidence which could not be obtained in the original administrative procedure for objective reasons or which could not be provided within the prescribed time limit.

      The confirmation of new facts mainly considers the following two points:

i.  The case evidence submitted in the re-application is different from the evidence in the previous case. The newly submitted evidence directly affects the application of the substantive provisions of the Trademark Law and has a substantial impact on the outcome of the trial. Thus, it can be seen that the difference in evidence constitutes "different facts", which is the core issue in the application of the principle of "non bis in idem".

ii. Specific to this case, the applicant increased prove the fact of the brand recognition and the actual use of the original respondent clings to its trademark subjective intent of evidence, the case has a substantial influence on the judgment of the substantive conclusions, the applicant also puts forward the new reason in this case, so the case is no longer restricted by the principle of "the principle". The principle of non bis in idem is a legal principle that has a great impact on the rights and obligations of the parties. In this review practice, attention should be paid to the application of the principle to maintain the certainty of administrative action, and the scale of application should be reasonably concerned to fully guarantee the substantive rights of the parties are protected in the case.

2.     Judgment of malice in the re-production, imitation and translation of trademarks known to the relevant public for more than five years

To balance the obligee's legitimate rights and interests, and to maintain the stability of a registered trademark, the Trademark Law in China has strict limitations towards the subject qualification that have been announced and filed invalid. The right holder or interested party, according to article 13 of the Trademark Law, should not file an application for invalidation in five years after the trademark registered. An exception is made in the above cases, i.e. the owner of a brand well known to the relevant public is not subject to five years for malicious registration. More than five years to apply this provision, the core is to identify the malicious. This kind of malice should have the apparent malicious intention such as using the registered trademark to attach others' high reputation trademark and seeking illegitimate economic benefits.

In this case, the National Intellectual Property Administration took into full consideration the original respondent's subjective malice of attaching others' well-known trademarks and the popularity of the prior brand, so as to determine the original respondent's malicious behavior. The application of this clause is a reflection of strengthening the protection of trademarks well known to the relevant public, which reflects the strict regulation of the trademark administrative authority on deliberately attaching the trademark popularity and goodwill of others, and plays a positive role in promoting the healthy and orderly development of the market economy, combating malicious registration, and protecting the rights and interests of the parties.