TM5 Bad Faith Project

Case Examples of
Bad-Faith Trademark Filings

Updated December 2019
in cooperation with INTAi

ii

Table of Contents
Ⅰ. Introduction................................................................................................................ 1
Ⅱ. Case Examples .......................................................................................................... 3
Case Examples of CNIPA .......................................................................................... 4【CNIPA-1】

v. 惠尔康【CNIPA-2】【CNIPA-3】......................................................................................................5v.
v.

............................................................................................8......................................................................................................10【CNIPA-4】EXPEDITORS v. EI Expeditors International ....................................................................13【CNIPA-5】GIORGIO ARMANI (乔治•阿玛尼) v. 乔治･阿玛尼【CNIPA-6】湘莲 XIANGLIAN v. XIANGLIAN【CNIPA-7】海棠湾 v. 海棠湾............................................15........................................................................17....................................................................................................20【CNIPA-8】WONDERWARE v. Wonderware............................................................................22【CNIPA-9】MEGAPULSE v. MEGAPULSE..............................................................................24【CNIPA-10】v.

.......................................................................................................26【CNIPA-11】华为 NOVA v. VAVI 华为..................................................................................28【CNIPA-12】MOTO RETA v. MOTO RETA.............................................................................29【CNIPA-13】高山别庄 v. 高山别庄..........................................................................................31【CNIPA-14】伊顿 v. 伊顿公学..................................................................................................33【CNIPA-15】道奇 v. 道奇战斧..................................................................................................35

Case Examples of EUIPO ........................................................................................ 37【EUIPO-1】BALBCARE v. BALBCARE...................................................................................38【EUIPO-2】Camomilla v. CAMOMILLA ..............................................................................................39【EUIPO-3】COLOURBLIND v. COLOURBLIND ...............................................................................41iii

【EUIPO-4】Doggis v. Doggis.......................................................................................................43【EUIPO-5】GUGLER v. GUGLER ........................................................................................................45【EUIPO-6】LLRG5 v. LLRG5.....................................................................................................46【EUIPO-7】LUCEO v. LUCEA LED【EUIPO-8】v.

..........................................................................................48.......................................................................................................50【EUIPO-9】SIMCA v. SIMCA....................................................................................................52【EUIPO-10】URB v. URB ......................................................................................................................54【EUIPO-11】Mr. Arrigo Cipriani v. CIPRIANI .....................................................................................56【EUIPO-12】v............................................................................................................57【EUIPO-13】Dariusz Tiger Michalczewski,【EUIPO-14】v【EUIPO-15】

v T.G.R. ENERGY DRINK..............59........................................................................................................61v...................................................................63

Case Examples of JPO ............................................................................................. 65【JPO-1】KUMA v. PUMA...........................................................................................................66【JPO-2】ASRock v. Asrock..........................................................................................................68【JPO-3】COMEX v. comex..........................................................................................................70【JPO-4】LAMBORGHINI v. Lambormini...................................................................................72【JPO-5】Manhattan passage v. ManhattanPortage.......................................................................74【JPO-6】L’AIR DU TEMPS v. レールデュタン.......................................................................76【JPO-7】MARIEFRANCE v. MARIE FRANCE.........................................................................78【JPO-8】M.A.C MAKEUP ART COLLECTION v. M.A.C【JPO-9】SONY v. SONYAN........................................................80.......................................................................................................82【JPO-10】RC TAVERN / アールシータバーン v. アールシータバーン

iv.............................84

【JPO-11】Chromax v. Chromax...................................................................................................86【JPO-12】のらや v. のらや.....................................................................................................88【JPO-13】Tarzan（ターザン）v. Tarzan....................................................................................90【JPO-14】v.

......................................................................................................................93【JPO-15】v.

........................................................................................................95

Case Examples of KIPO .......................................................................................... 97【KIPO-1】ALPINESTARS v. ALPENSTER...............................................................................98【KIPO-2】なかったコトに！ v. なかった コトに............................................................100【KIPO-3】v.

..........................................................................................................102【KIPO-4】v.

.................................................................................104【KIPO-5】HUM v. Hum.............................................................................................................106【KIPO-6】LOOK v. LOOK........................................................................................................108【KIPO-7】v.

............................................................................................110【KIPO-8】ROLEX v.
【KIPO-9】v.

........................................................................................112...................................................................................................................114【KIPO-10】LOUIS CASTEL v. LOUIS CASTEL【KIPO-11】MK v. MK.....................................................................116...............................................................................................................118【KIPO-12】THEZARA v. ZARA...............................................................................................120【KIPO-13】Mango Monster v. Monster Energy ...................................................................................122【KIPO-14】Kosney v. KOSNEY................................................................................................124【KIPO-15】GENTLE MONSTER v. GENTLE MONSTER ...............................................................126

Case Examples of USPTO ..................................................................................... 128【USPTO-1】NATIONSTAR MORTAGE v. NationStarv...........................................................129

【USPTO-2】

v.

...................................................................................................131【USPTO-3】CHIRO-KLENZ v. SUPER CHIRO TEA【USPTO-4】AUDITORIO TELMEX v. TELMEX【USPTO-5】UVF861 v. UVF861.............................................................133...................................................................135...............................................................................................137【USPTO-6】Benny Goodman Collection THE FINEST QUALITY v. BENNY GOODMAN.139【USPTO-7】FLANAX v. FLANAX..........................................................................................141【USPTO-8】IWATCH v. SWATCH..........................................................................................143【USPTO-9】L'OREAL v. L'OREAL PARIS..............................................................................145【USPTO-10】MISTER SOFTEE(a registered sound mark) v. a sound mark............................147【USPTO-11】QUIRK and QUIRK WORKS TO SAVE YOU MONEY v. QUIRK and QUIRK AUTO PARK ....149【USPTO-12】SEAL TEAM PHYSICAL TRAINING INC. v. SEAL TEAM or SEALs........151【USPTO-13】SUPERMAN and SUPERWOMAN v. SUPER WOMAN OF REAEL ESTATE..................................................................................................................................................................153【USPTO-14】TAO v. TAO VODKA.........................................................................................155【USPTO-15】BONNIE CASHIN and BONNIE CASHIN FOUNDATION v. BONNIE CASHIN.....157

Case Examples of Other Countries/Regions ....................................................... 159
ARGENTINA ......................................................................................................... 160
ALL BLACKS v. ALL BLACK’S................................................................................................160

CHRISTIAN DIOR v. CHRISTIAN DIOR...................................................................................162

LA VACHE QUI RIT v. LA VACA QUE RIE
XERODERM v. XERODERM.............................................................................164......................................................................................................166

ARMENIA .............................................................................................................. 168
BUMMY v. BUMMY....................................................................................................................168

AUSTRALIA .......................................................................................................... 170
viCLIPSAL v CLIPSO......................................................................................................................170

MR CAR KEYS v MR AUTO KEYSv
BEACHES AND BUSH...........................................................................................172......................................................................................................174v.....................................................................................................176

HEMOSTYP v HEMOSTYP.........................................................................................................178

AUSTRIA ................................................................................................................ 180
FEELING v. FEEL.........................................................................................................................180

Cafe Museum v. CAFÉ MUSEUM................................................................................................182

BRAZIL .................................................................................................................. 184
HIMEDIA v. HIMEDIA................................................................................................................184

VOGUE v. CAFFE VOGUE ....................................................................................................................186
TYLENOL v. TYLOL...................................................................................................................188

DERMYCASE vs. DERMICASE..................................................................................................189

CANADA ................................................................................................................ 191
IRRESISTIBLES v. IRRESISTIBLES..........................................................................................191

BUGATTI v EB BUGATTI & DESIGN................................................................193

CHILE ..................................................................................................................... 195
ANN TAYLOR v. ANN TAYLOR...............................................................................................195

COLOMBIA ........................................................................................................... 197
HEXAGON v. HEXAGONGS OIL v. GS OIL...........................................................................................................197.........................................................................................................................199

KLAYSA v. LAY´S .................................................................................................................................201

COSTA RICA ........................................................................................................ 203
Tim Hortons v. Tim Hortons..........................................................................................................203vii

DESIGUAL v. DESIGUAL...........................................................................................................205

CUBA ...................................................................................................................... 207
BLUETOOTH vs BLUETOOTH..................................................................................................207

ECUADOR.............................................................................................................. 209
MARC JACOBS vs MARC JACOBS...........................................................................................209

FINLAND................................................................................................................ 211
Humsecgrid v. HUMSECGRID.....................................................................................................211

FRANCE ................................................................................................................. 213
IT COSMETICS v. IT COSMETIQUE.........................................................................................213

Pigeon proper v. clean pigeon ..................................................................................................................215
Parnasse v. Parnassea ...............................................................................................................................217

GERMANY ............................................................................................................. 219
Glückspilz (“Lucky Devil”/”Lucky Dog”) ...............................................................................................219
Hop on Hop off..............................................................................................................................221

AKADEMIKS v. AKADEMIKS...................................................................................................223

HONG KONG ........................................................................................................ 225
v. Mastercard ................................................................................................................................225

HUNGARY ............................................................................................................. 227
v.
AFRICANA......................................................................................................................................227...................................................................................................................................229

INDIA ...................................................................................................................... 231
VOLVO v. VOLVO
EGO v. EGO.......................................................................................................................231..................................................................................................................................233

JAGUAR v. JAGUAR...................................................................................................................235

MAGGI v. MAGGI........................................................................................................................237

SONY v. abt SONY.......................................................................................................................240
viii

IRELAND ............................................................................................................... 242
MARIE CLAIRE v. MARIE CLAIRE .....................................................................................................242

ISRAEL ................................................................................................................... 245
SUJOK...........................................................................................................................................245

ITALY ..................................................................................................................... 247
MANZANA v. BALORU MANZANAHAVAIANAS v. HAVENA.........................................................................................247..........................................................................................................249

KENYA ................................................................................................................... 251
KENYA BOYS CHOIR v. KENYAN BOYS CHOIR..................................................................251

LATVIA .................................................................................................................. 253
SAP HANA VS. HANA..........................................................................................................253

MALAYSIA ............................................................................................................ 255,v.

.................................................................................................255

MYANMAR ............................................................................................................ 257
STANDING CHINTHAY v. SITTING CHINTHAY & SITTING CHINTHAY & TWO
RANGOON OPTICAL WORKS v. RANGOON OPTICAL WORKS...........257........................................259

Trademark depicting elephant and lion with “Ko Kyaw” ........................................................................261

NEW ZEALAND.................................................................................................... 263
TOMTOM And

v TOM TOM..........................................................................263v.........................................................................................................................265

THE COOK..................................................................................................................................268

CLIMATE PRO v CLIMATE PRO...............................................................................................270

and MSpa.................................................................................................272v MSpa

ECOTRICITY V ECOTRICITY ..............................................................................................................274

PAKISTAN ............................................................................................................. 276
Power Sonic v Power Sonic...........................................................................................................276ix

PARAGUAY ........................................................................................................... 278
CHOCOCHIPS vs. CHOCOCHIPS...............................................................................................278

PERU ....................................................................................................................... 280
BIOTRONIK v. BIOTRONIK.......................................................................................................280v.

.......................................................................................282v.

...............................................................................................284

PHILIPPINES ........................................................................................................ 286
LE CORDON BLEU ECOLE DE CUISINE MANILLE vs.
vs.

.............................................286.....................................................................................................................288,

vs. Birkenstock

IN-N-OUT BURGER vs. IN N OUTBIG MAC vs. BIG MAK..............................................................................290.............................................................................................292...............................................................................................................294

RUSSIA ................................................................................................................... 296
CRISTAL v. CRISTALINO..........................................................................................................296

VACHERON CONSTANTIN v. VACHERON CONSTANTIN..................................................298

SERBIA ................................................................................................................... 300v.

........................................................................................................................300

Kolid Sunday v. Sunday every day is a celebration (device).......................................................302

SINGAPORE .......................................................................................................... 304

and A&F vs.

..............................................................................................304

A1 v. AOne ...............................................................................................................................................306
Gucci v GUCCITECH ..............................................................................................................................308

SPAIN ...................................................................................................................... 310x

OCTANAJE vs. OCTANAJE MAGACINE..................................................................................310

HISPANO SUIZA vs. HISPANO SUIZA, FÁBRICA DE AUTOMÓVILES, S.A. ...............................312
NEW YORK FAIR & LOVELYCAFÉ DEL MAR...................................................................................................314...........................................................................................................................316

SWEDEN ................................................................................................................ 318
COCOZ vs.

...........................................................................................318

CLIMATE POSITIVE vs.

CLIMATE POSITIVE .............................................................................320

SVENSKA RESEBOLAGETBERGLÖFSLÅDAN

vs.

vs.

....................................................................................322

BERGLÖFSLÅDAN and BERGLÖFSLÅDAN ORIGINAL........324

TAIWAN ................................................................................................................. 326
Pizza Hut, 熱到家 v. 熱到家 Co.,Ltd......................................................................................326

THAILAND ............................................................................................................ 328
D2 v.

.................................................................................................................................328

UK ............................................................................................................................ 331
32 vs. 32Vegas..........................................................................................................................................331
Alexander.......................................................................................................................................333

CHINAWHITEOne Max..............................................................................................................................335.........................................................................................................................................337

Roadrunners...................................................................................................................................339

UKRAINE ............................................................................................................... 341
Mando v. MANDO........................................................................................................................341

URUGUAY ............................................................................................................. 343
F1 v. F1 FORMULA 1...................................................................................................................343

VIETNAM .............................................................................................................. 345
SNAPCHAT vs. SNAPCHAT.......................................................................................................345xi

Hyundai vs. Hyundai for electric bicycles.....................................................................................347

Appendix .................................................................................................................... 349
List of the Contributors - Bad Faith Case Summaries of OtherCountries/Regions .................................................................................................. 349

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Note：
2

3

1

1. Category
In this compilation, the cases are categorized according to the following five types.
(i)Free Ride(ii) Imitation by agents or people who have a prior relationship(iii) Interference by a competing company(iv) Lack of intention to use(v) Others
2. “” : The case in which "Bad faith" was found in the disputed trademark.

3. “disputed trademark” : The mark which was disputed in the case.

xiii

0

Ⅰ. Introduction
There is a common, global issue of so-called “bad faith trademarks”, which are trademarks that
persons register or seek to register in bad faith for unfair purposes. One example is a person
registering a trademark belonging to another person and taking advantage of the fact that thetrademark had not yet been registered in the country/region concerned.
At the fourth TM5 Annual meeting held in December 2015, we, the TM5 Offices, agreed to compilea reference called “Case Examples of Bad-Faith Trademark Filings”. The reference containing caseexamples was released in May 2017.
This release was a successful outcome of the initiatives that we had advanced in terms of bad faithtrademarks. This year, we are pleased to release an upgraded version of case examples. In this latest
version, not only cases from the TM5 Offices but also cases from offices in other countries andregions were added.
The previous Case Examples consisted of 10 cases each from the TM5 offices, for a total of 50 cases.
In this version, five more cases each from the TM5 offices have been added. These are listed as
examples No.11 to 15 in each office’s section in Chapter II.
Cases from other countries and regions were collected from Asia, North America, Central and SouthAmerica, Europe, and Africa, in full cooperation with the International Trademark Association(INTA). In this version, 93 additional cases were selected and listed. A list of contributors is provided
in Appendix.
In addition, among the three original categories of bad faith, which were Free ride, Immoral, andLack of intention to use, we reviewed the cases listed under “Immoral” and agreed to subdivide thiscategory into two, setting up two new categories called “Imitation by agents or people who have aprior relationship” and “Interference by a competing company”. We also set up a category called“Others”. As a result, there are now five bad faith categories. We appropriately categorized not only
the new cases added to this version but also re-categorized the original 50 cases into these fivecategories accordingly.
We hope the examples in this latest upgraded version, which is designed to assist trademark users
1around the world to better understand bad faith trademarks, will be valuable in helping them todevelop their trademark strategies.

China National Intellectual Property Administration
European Union Intellectual Property Office
Japan Patent Office
Korean Intellectual Property Office
United States Patent and Trademark Office2

Ⅱ. Case Examples

3

Case Examples of CNIPA

4

【CNIPA-1】

v. 惠尔康1. Titlev. 惠尔康 (Protection of unregistered well-known trademark “惠尔康”)
2. Country

China

3. Court

Supreme People’s Court of the People's Republic of China

4. Case No.

[2014] Zhi Xing Zi No.9

5. Date of the judgment

2014/10/9

6. Parties : Plaintiff

Fuzhou Weitalong Nutritious Food Co., Ltd.

Defendant

Trademark Review and Adjudication Board of the State Administration for
Industry and Commerce

7. Mark

Plaintiff (disputed trademark)Defendant

8. Outline of the case
Where a trademark for registration to be used on identical or similar goods is a copy, imitation, or translation of awell-known trademark of another party which has not been registered in China and may easily cause confusion,
it shall not be registered and shall be prohibited from use.
9. Summary of the judgment
Fact Finding
According to the facts found out by the original court, the evidences provided by Xiamen Huierkang during
trademark review can prove that this company has been using the trademark “惠尔康” for a long time and has
made great efforts on promotion thereof. The trademark “惠尔康” had a high brand awareness prior to the dateof application. What’s more, Xiamen Huierkang and its affiliates used the trademark “惠尔康” earlier than
Tianjin Huierkang(assignor of Trademark No. 701244), and the date it registered phonetic alphabet and figure of
the Trademark for production and operation of food & beverage was also earlier than the date of registration
application for Trademark No. 701244. Thus, it is reasonable and legitimate for the Company to use thetrademark “惠尔康” in Chinese on its food & beverage products. The fact that the application for registration of5the Chinese trademark “惠尔康” was rejected shall not represent that the company has no right to use thetrademark. Although there is similarity between the Chinese trademark “惠尔康” used by Xiamen Huierkang
and Trademark No. 701244, there are also some sensible differences in the overall structure and thecharacteristics styles, therefore they are not the same trademark. Considering no evidence which can prove that
Trademark No. 701244 has been used really and continuously for a certain period and certain brand awareness,there is no subjective intention and objective fact for use by Xiamen Huierkang of the trademark “惠尔康” that
Xiamen Huierkang desires to seek for unfair interests by means of use of other persons’ trademarks, and such use
will not lead confusion or misunderstanding. Accordingly, the Chinese trademark “夏尔康” actually used by
Xiamen Huierkang is not a similar trademark with Trademark No. 701244 to the extent of infringement oftrademark right; the claim made by Weitalong(assignee of Trademark No. 701244) that use by Xiamen
Huierkang of the unregistered trademark “惠尔康” constituted an infringement of the right to Trademark No.
70244 lacks of relevant facts and legal basis; in addition, the cause stated by Weitalong that the unregisteredtrademark “夏尔康” used by Xiamen Huierkang may not be recognized as a well-known trademark due to suchreason may not be accepted and then rejected by the Court.
Opinions of the Court
The disputed trademark and Trademark 701244 are different and independent trademarks in the fields of marks
and designated commodities, and there was no extension or transfer of business reputation between the two
trademarks. It has no legal basis for the claim made by Weitalong that indicates that the disputed trademark was
an application for renewal or extension of Trademark No.701244. Whether transfer of Trademark No. 701244 isvalid and effective is not the cause for the Trademark Review and Adjudication Board and the original court tojudge registration of the disputed trademark is unfair and is irrelevant to the Case. The essential attribute of a
trademark is a mark by which an operator distinguishes its own commodities or services from others. An
operator that applies for trademark registration shall have real use intention, respect any prior legal rights
acquired by others and abide by the basic principle of good faith. The evidence submitted by Xiamen Huierkang
during trademark review and legal proceedings can prove that Weitalong had performed a serious of activities for
trademark squatting against Xiamen Huierkang. Thus, it is improper for Weitalong to insist on registering the
disputed trademark which is the same as the trademark “惠尔康” actually used by Xiamen Huierkang for thesame or similar commodities. In fact, Trademark No. 701244 is not a trademark with certain goodwill throughlong-term use and promotion. After accepted by Weitalong, the Trademark No. 701244 was revoked for non-use
in 3 consecutive years, and such transfer had been judged as invalid and null in another case. Therefore, the6

causes for retrial applied by Weitalong with respect to the trademark are rejected by the Court.

To sum up, the Trademark Review and Adjudication Board confirmed that the trademark “惠尔康” used by
Xiamen Huierkang was a well-known trademark and it was the disputed trademark that copied and imitated thewell-known trademark, based on which it decided to revoke the registration of the disputed trademark. Suchruling conforms to the Trademark Law; therefore, it is appropriate to maintain such ruling in the two original
trials. Furthermore, the application submitted by Weitalong for retrial does not conform to the retrial conditions
provided for in Article 63.2 of the Administrative Procedure Law of the People's Republic of China and Article
72 of the Interpretation of the Supreme People’s Court on Several Questions about Implementation of the
Administrative Procedure Law of the People's Republic of China. Pursuant to Article 74 of the Interpretation of
the Supreme People’s Court on Several Questions about Implementation of the Administrative Procedure Law of
the People's Republic of China, it is hereby ruled as follows: to reject the application for retrial submitted by
Fuzhou Weitalong Nutrition Food Co., Ltd.
10. Tags① Type of trial

Suit for the decision of trial② Decision

Invalidation③ Type of bad faithFree Ride✓

Imitation by agents or people who have a prior relationship
Interference by a competing company
Lack of intention to use
Others7

v.

【CNIPA-2】
1. Titlev.
2. Country

China

3. Court

Trademark Office of the State Administration for Industry and Commerce

4. Case No.

(2014) Shang Biao Yi Zi No. 00085

5. Date of the judgment

2014/1/28

6. Parties : Plaintiff

International Business Machines Corporation (IBM)Defendant
7. Mark

Foshan Shunde Huineng Electromechanical Equipment Co., Ltd.
Cited Trademark

Defendant (disputed trademark)8. Outline of the case
The Trademark Office confirmed that the cited trademark was a well-known trademark for such commodities as“computer programs and software”. The disputed trademark was very similar visually with the cited trademark.
Considering the originality and popularity of the Plaintiff’s trademark, the Trademark Office deemed that there
was subjective intention of copy and imitation in the disputed trademark and that approval of the application forregistration of the disputed trademark would mislead the consumers, which would further result in damage on
the business reputation of the Plaintiff. Therefore, the Trademark Office refused the application for registrationof the disputed trademark.
9. Summary of the judgment
Basic Facts
Beijing Wan Hui Da Intellectual Property Agency, the agent of IBM (hereinafter referred to as the “Plaintiff”),
challenges against Trademark No.9062752, “IBM 及图”, for which was applied by Guangzhou HuaQi
Intellectual Property Deputize Ltd, the agent of Foshan Shunde Huineng Electromechanical Equipment Co., Ltd.
(hereinafter referred to as the “Defendant”), and which was reviewed by the Trademark Office and publicized on
the 1295th Trademark Announcement. The Trademark Office accepted the case pursuant to Article 30 of theTrademark Law of People’s Republic of China. The Defendant failed to reply within the required period.
Opinions of the Trademark OfficeAccording to the facts and causes stated by the Parties, the Trademark Office deems that the Plaintiff, establishedin 1911 in the USA, is a world famous information technology and business solution company, consisting ofsuch main departments as Global Technology Services Department, Global Business Consulting Service
Department, Software Group, System and Technology Department and Global Financing Department. In 1979,8

Shenyang Blower Works Group Corporation imported IBM370/138 mainframe, which was the first computersold by IBM to Mainland China after the founding of New China. In 1992, ETC was established in Shanghai,
mainly engaged in China General Spare Parts Center. In 2005, ISTC was established as the strategic base of IBM
for order performance and manufacture. IBM had established 31 branches in China as of 2011, and at least 3
affiliates have the right to use the trademark “IBM”. As of September 30, 2011, IBM’s market value reaches up
to USD214 billion and then became Top 2 technology company, surpassing the market value of Microsoft. The
Plaintiff has successfully registered the trademark "IBM" for several kinds of commodities No. 9, 16, 37 and 42
and certain service items in China. The Plaintiff has made great efforts to publicize its trademark and products bymeans of magazines, newspaper, TV and other media. All such facts are supported by the copies of someadvertisements, Annual Financial Statements and Audit Reports of IBM China from 2008 to 2010 which areprovided by the Plaintiff. Trademark “IBM” owned by the Plaintiff has been widely known and enjoyed highreputation in China through long-term and wide promotion and use. Therefore, pursuant to Article 14 of theTrademark Law and the Provisions on the Recognition and Protection of Well-known Trademarks, theTrademark Office recognized the trademark “IBM” registered and used by the Plaintiff for such commodities ascomputer programs, computer software, computer hardware, computers and peripheral units as the well-known
trademark.

The disputed trademark “IBM 及图” is more or less the same as Trademarks No. 1509898, No. 1767764 and No.
221321 in overall design and visual sense. Considering the originality and popularity of the Plaintiff’s trademark,the Trademark Office deemed that there was subjective intention of copy and imitation in the disputed trademarkof which the Defendant applied for registration and that approval of the application for registration of the
disputed trademark would mislead the consumers, which would further result in damage on the business
reputation of the Plaintiff.
Pursuant to Articles 13.2 and 33 of the Trademark Law of the People’s Republic of China, the Trademark Officerules that the claims made by the Plaintiff are accepted and that the registration application for Trademark
No.9062752, “IBM 及图” will not be approved.
10. Tags① Type of trial

Opposition to the registration② Decision

Ruling to reject the trademark application③ Type of bad faithFree Ride✓

Imitation by agents or people who have a prior relationship
Interference by a competing company
Lack of intention to use
Others9

【CNIPA-3】v.

1. Titlev.

(Protection of prior copyright “m”)

2. Country

China

3. Court

The High People’s Court of Beijing

4. Case No.

Administrative Judgment (2015) Gao Xing (Zhi) Zhong Zi No. 3963

5. Date of the judgment

2015/12/25

6. Parties : Plaintiff

Ou Yongwei

Defendant

Trademark Review and Adjudication Board of the State Administration for
Industry and Commerce
Mothercare Limited

7. Mark

Plaintiff (disputed trademark)Defendant

8. Outline of the caseMothercare Limited legally owns the copyright to the works it claims; the disputed trademark is basically thesame as, even substantially approximate with, the works to which Mothercare has the copyright from suchaspects as factors, visual effect and design style; the works claimed by Mothercare has been released in publicthrough trademark application, actual use and publicity; it is quite possible for Ou Yongwei to access the worksof Mothercare; registration of the disputed trademark prejudices the prior copyright owned by Mothercare andviolates Article 31 of the Trademark Law.
9. Summary of the judgment
Facts Finding
On May 8, 2008, Ou Yongwei applied for registration of Trademark No.6708636, “妈妈世界及图”, which wasapproved on March 28, 2010 for such commodities as Class 12 “baby carriages; baby cars; baby strollers”.
Mothercare submitted relevant evidence to initial publication of its works, publicity evidence, sales contracts,
invoices, certificate of honor and other supporting documents at the stage of trademark review and, during legal
proceedings, the Testimony, as well as translations thereof, issued by Daniel Veale , the partner of Pentagram
Design Limited London Office, concerning his design and completion of the works claimed by Mothercare asappointed, ideas for design and title ownership, and the notarized Affidavit, as well as translations thereof, which
was issued by Schonen Kelly , a business lawyer, concerning early and continuous publication all over the worldof the works claimed by Mothercare and the brand awareness. In 2012, Mothercare was issued the Certificate of10

Copyright Registration with respect to “MDolly 图形,” stating that the documents submitted by the Applicant
Mother UK Limited met relevant requirements; with respect to “MDolly 图形” which was created by Pentagram
Design Limited on February 23, 2005 and initially published in the UK on April 28, 2005, the Applicant legally
owned the copyright as the copyright owner of such works, with the registration number Guo Zuo Deng
Zi-2012-F-00071979, and the date of registration was September 28, 2012. In 2012, Ou Yongwei was issued theCertificate of Copyright Registration with respect to “妈妈世界及图”, stating that the documents submitted by
the Applicant Ou Yongwei (from Hong Kong, China) met relevant requirements; with respect to “妈妈世界及图” which Ou created on February 2, 2007, the Applicant legally owned the copyright as the author, with theregistration number Guo Zuo Deng Zi-2012-F-00074290, and the date of registration was October 25, 2012.
Judgment of the Court
The works of Mothercare is composed of two parts, English letter “m” and “human figure”, in which letter “m”
is the initial of “mother” and has similar sound with “mom”, and the “human figure” depicts a cute baby.
Overall, the design carries a good idea that babies are in good care from moms and has high originality;
therefore, it is the works as defined in the Copyright Law. Mothercare has submitted sufficient evidence at thestage of registration review and during legal proceedings, which form a completed evidence chain proving the
copyright owned by Mothercare to the works concerned. The disputed trademark includes Chinese characters“妈妈世界” and relevant figure which is also composed of “m” and “human figure”. Compared with the works
claimed by Mothercare, they are very similar in appearance, factors and detail design, without any obvious
difference; in other words, the two trademarks are substantially similar for the purpose of the Copyright Law.
The works claimed by Mothercare has been released in public through trademark application, actual use andpublicity. It is quite possible for the owner of the disputed trademark to access the works of Mothercare.
Considering the “registration on a voluntary basis” principle adopted in China for copyright registration, thecopyright registry made a formal examination only at the time of copyright registration; however, the evidence
such as the Certificate of Copyright Registration submitted by Ou Yongwei cannot fully prove his independent
creation and ownership of the copyright due to the originality. Accordingly, registration of the disputed
trademark prejudices the prior copyright owned by Mothercare to its works and violates Article 31 of theTrademark Law. Thus, the disputed trademark shall be revoked pursuant to law.
10. Tags① Type of trial

Suit for the decision of TRAB (Trademark Review and Adjudication Board) of SAIC

② Decision

Invalidation③ Type of bad faith11Free Ride✓

Imitation by agents or people who have a prior relationship
Interference by a competing company
Lack of intention to use
Others12

【CNIPA-4】EXPEDITORS v. EI Expeditors International
EXPEDITORS v. EI Expeditors International (Protection of trade name right “EI

1. Title

Expeditors International”)
2. Country

China

3. Court

Trademark Review and Adjudication Board of the State Administration for
Industry and Commerce

4. Case No.

(2015) Shang Biao Yi Zi No. 0000055470

5. Date of the judgment

2015/11/3

6. Parties : Plaintiff

Expeditors International of Washington, Inc.

Defendant
7. Mark

Xiamen Anshitong International Express Logistics Co., Ltd.
Plaintiff

Defendant (disputed trademark)8. Outline of the case
The distinctive part of the disputed trademark is identical with that of the Plaintiff’s firm name. Therefore,
application for registration of the disputed trademark for logistics service constitutes infringement of thePlaintiff’s right to firm name.
9. Summary of the judgment
Basic Facts
The Plaintiff, Expeditors International of Washington, Inc., put forward an objection to Trademark No.11876956,“EI EXPEDITORSINTERNATIONAL”, owned by Xiamen Anshitong International Express Logistics Co.,

Ltd., which was approved by the Trademark Office and publicized on the 1396th Trademark Announcement. The
Trademark Office accepted the case in accordance with the Trademark Law. The Defendant replied within thedesignated period.
Opinions of the Trademark Office
The disputed trademark, “EI EXPEDITORS INTERNATIONAL”, is used for Class 39 “packing; marinetransportation” and other services. The trademarks cited by the Plaintiff, No. 971630 “EXPEDITORS” andNo.4600331 “EXPEDITORSTRADEFLOW”, which were registered early, are approved for Class 39 “freight

broker” and Class 42 “interim use for the software unavailable online suitable for management of shipment,
imports & exports and combined transportation”. Trademark “EXPEDITORS” is of a logo in foreign language
without existing alphabetic combination and special meaning and has high originality. The evidence submitted
by the Plaintiff shows that, as the trademark and main part of its firm name, “EXPEDITORS” has been known
well in international logistics industry through publicity and use in several years. The Defendant that is engaged
in the transportation business should be aware of the Plaintiff’s trademark and firm name. The “Marine
Transportation; Vehicle Transportation” business to which the disputed trademark is applied is closely related13with the services supplied by the Plaintiff, and the distinctive part of the disputed trademark is identical with thatof the Plaintiff’s firm name; therefore, application for registration of the disputed trademark for logistics service
constitutes infringement of the Plaintiff’s right to firm name. In addition to the disputed trademark, the Plaintiff
has applied for registration of several trademarks containing original logos and words identical with those early
used by international famous logistics enterprises, but the Defendant fails to make a reasonable explanation
about its originality for the disputed trademark during reply. Therefore, the Trademark Office deems that the
Defendant’s behavior constitutes intentional and obvious copy and cribbing of other party’s trademark, violatingof the principle of good faith and disturbs the fair order of market competition.
Pursuant to Articles 7, 30, 32 and 35 of the Trademark Law, the Trademark Office decides not to register
Trademark No.11876956, “EI EXPEDITORS INTERNATIONAL”.
10. Tags① Type of trial

Opposition to the registration② Decision

Ruling to reject the trademark application③ Type of bad faithFree Ride✓

Imitation by agents or people who have a prior relationship
Interference by a competing company
Lack of intention to use
Others14

【CNIPA-5】GIORGIO ARMANI (乔治•阿玛尼) v. 乔治･阿玛尼
1. Title

GIORGIO ARMANI (乔治•阿玛尼) v. 乔治･阿玛尼 (Protection of right ofname “GIORGIO ARMANI”)

2. Country

China

3. Court

Trademark Review and Adjudication Board of the State Administration for
Industry and Commerce

4. Case No.

Shang Ping Zi (2009) No. 29925

5. Date of the judgment

2009/11/3

6. Parties : Plaintiff

GA Modefine S.A.

Defendant
7. MarkHangzhou Xinchen Trading Co., Ltd.
Plaintiff

Defendant (disputed trademark)8. Outline of the case
The focus issue of the Case is whether registration of the disputed trademark prejudices the prior right ofpersonal name owned by GIORGIO ARMANI (乔治•阿玛尼).
9. Summary of the judgment
Basic Facts
With respect to the disputed trademark, the applicant submitted an application for registration on February 3,
2000. It was on April 28, 2001 that the trademark was approved, applied to Class 3 “soaps, decontaminants,
polishes, cosmetic spice, cosmetics and perfumes”.
Identity certificate of Mr. GIORGIO ARMANI, the copy of the right declaration, the original of the notarial deed
and Chinese versions thereof which are submitted the Applicant can prove the fact that Mr. GIORGIO ARMANI
has authorized the Applicant to protect his right of personal name in China. The copies of such articles related in
the publications collected by the National Library of Chinese, the Foreign Textile Technology (Issue 14 in 1991
and Issue 14 in 1992), the Economic Guide (Issue 4 in 1996), the Jiangsu Textile (Issue 10 in 1992 and Issue 10
in 1997), the Chinese New Era (Issue 1 in 1998), the Music World (Issue 4 in 1999), the International Talent
Exchange (Issue 10 in 1999), the Art of Life (Issue 1 in 2000) as the Fashion Trends of Autumn & WinterClothing 1992/1993, Italian Designer GIORGIO ARMANI, the Fashion Trends of Spring & Summer Clothing
1992, the Fashion Trends of Autumn & Winter Clothing 1992/1993, the Fashion Dream, On Trend of
Feminization of Men's Clothing, the Flame under Iceberg: GIORGIO ARMANI - the Fashion Design Master in
Milan, I Love Brands, To Visit Italy - the Fashion Empire and the Western Fashion on Eastern Faces, which aresubmitted by the Applicant, can prove a fact that Mr. GIORGIO ARMANI, born in 1934, established GIORGIOARMANI S.P.A. In Italy in 1975. Mr. GIORGIO ARMANI, as a famous designer enjoying excellent reputation15

in the world fashion industry, is called “乔治•阿玛尼” in Chinese-speaking countries and regions.

Opinions of the Board
Relying on the awareness in the world fashion, Mr. GIORGIO ARMANI and his Chinese name have been
popular in China before the application for registration of the disputed trademark was submitted. The Chinesecharacters and relevant design adopted by the disputed trademark are identical with well-known Chinese nameof Mr. GIORGIO ARMANI. Obviously, the Defendant knowingly borrows the awareness of Mr. GIORGIOARMANI in an inappropriate way, which violates the public standards of good faith, causes adverse effect on
personal reputation of Mr. GIORGIO ARMANI and constitutes the infringement of the right to personal name of
Mr. GIORGIO ARMANI. Although the Defendant claimed that the disputed trademark was not transliteration of
the personal name “GIORGIO ARMANI” and was a coincidence even if they had similar pronunciation.
However, the Defendant failed to make reasonable explanation which was known by relevant persons withrespect to the originality of the disputed trademark. Thus, the Defendant’s defence cannot be supported. To sum
up, registration of the disputed trademark violates the provisions of Article 31 of the Trademark Law in 2001 on“No application for trademark registration may infringe upon the existing prior rights of others”, and the Board
hereby revokes the disputed trademark.
10. Tags① Type of trial

Trademark dispute to the registration② Decision

Invalidation③ Type of bad faithFree Ride✓

Imitation by agents or people who have a prior relationship
Interference by a competing company
Lack of intention to use
Others16

【CNIPA-6】湘莲 XIANGLIAN v. XIANGLIAN
1. Title

湘莲 XIANGLIAN v. XIANGLIAN (Protection of GI “湘莲 XIANGLIAN”)

2. Country

China

3. Court

Trademark Review and Adjudication Board of the State Administration for
Industry and Commerce

4. Case No.

Shang Ping Zi (2008) No. 06137

5. Date of the judgment

2008/6/30

6. Parties : Plaintiff

Xiangtan Xianglian Association

Defendant
7. MarkFujian Wenxin Lianye Food Co., Ltd.
Plaintiff

Defendant

湘莲 XIANGLIAN 及图
8. Outline of the case
The Defendant, locating in Fujian, had made business transactions of XIANGLIAN with Hunan lotus seedmerchants prior to the registration of the disputed trademark. However, even if the Defendant was aware thatXIANGLIAN was the geographical indication of lotus seed commodities, it still registered it as a trademark
other than collective marks and certification marks, causing the public mistaking the nature and source of the
products under the trademark. It is prohibited by Article 16.1 of the Trademark Law. Therefore, it is claimed to
revoke the registration of the disputed trademark for lotus seed and similar commodities.
9. Summary of the judgment
Basic Facts
1. With respect to the disputed trademark, Jianning Wenxin Lianye Co., Ltd. submitted an application forregistration on November 26, 2001, which was approved on January 7, 2003, applied to Class 29 “ lotus seeds,
jelly and meat”. With the approval of the Trademark Office, the registered owner was changed into the
Defendant, Fujian Wenxin Lianye Co., Ltd. nominally.
2. The Plaintiff, Xiangtan XIANGLIAN Association, established on December 8, 2000, is a non-profitablesocial legal entity coordinating the development of XIANGLIAN industry in Xiangtan.
3. According to the History of Xiangtan, the Chinese Culture on Lotus and the Xiangtan Agricultural
Regionalization Report Set, lotus seeds in Xiangtan are generally called as XIANGLIAN. In general, lotus seedsin Hunan may also be called XIANGLIAN, the best of which is lotus seeds in Xiangtan. The word
“XIANGLIAN” was first seen in the documents in the Southern Dynasties (420~589 A.D.). XIANGLIAN had
been designated as tribute until Daoguang Dynasty. The aforesaid documents also record the quality
characteristic, technical essential in cultivation of XIANGLIAN.
17

4. The comprehensive base for export of agricultural, sideline, local and livestock products (including
XIANGLIAN) was put into operation in Xiangtan from 1976 to 1979. In 1982, Price Committee of Hunan
Province issued documents to continue to implement the price subsidies for Hunan lotus seeds and other 3exported commodities, and such commodities from Xiangtan, Hanshou and state-run provincial farms, as listed
in the exhibit, may enjoy subsidies. In 1984, Wuhan Institute of Botany of Chinese Academy of Sciences issued
the analysis report sheet for the elements contained in the XIANGLIAN products sent for inspection by Science
Committee of Xiangtan, Hunan. In 1995, Xiangtan, a county of Hunan province, was named by the China
naming, promotion and activity organization committee of the first batch of hundred hometowns of special
products as “the Hometown of Chinese XIANGLIAN”. In 1996, Xiangtan People’s Government submitted areport on planning of XIANGLIAN industrial development project, subsidized interest and development of
XIANGLIAN product series to the State Planning Commission (now the National Development and Reform
Commission), SETC, the Ministry of Finance, the Finance Department of Hunan Province and Agricultural Bankof China.
5. There are 6 enterprises registered with Xiangtan Administration for Industry and Commerce Huashi Branch
for XIANGLIAN process and sales on and prior to November 26, 2001(the registration date of the disputed
trademark).
6. Before and after application for registration of the disputed trademark, the Defendant had made business
transactions with Hunan lotus seed merchants.
7. According to the Chinese Local Products Dictionary published by the Commercial Press in March, 1991,
XIANGLIAN spreads all over Hunan Province, especially the region of Dongting Lake. The Dictionary explains
the quality characteristics, nutritious elements, cultivation characteristics and geographical scope of and withrespect to XIANGLIAN.
Opinion of the Trademark Review and Adjudication Board
1. According to the evidence submitted by the Plaintiff and the Chinese Local Products Dictionary,
XIANGLIAN spreads around Hunan, especially the region of Dongting Lake. The product has the characteristics
of big seeds, white color, full flesh, cyan soap, strong fragrance, fresh taste and so on. The nutritious elements
contained in it, including protein, fat and mineral substance, are different from the lotus seed produced in otherregions. The above characteristics are mainly subject to the natural conditions (temperature, rainfall, humidity,
sunshine, soil, water conservation, etc. in the living region) and the cultivation means. The title of“XIANGLIAN”, used since the Southern Dynasties, has already formed congruent relationship with its
producing place Hunan. It satisfies the recognition condition of the geographic indication stipulated in Article
16.2 of the Trademark Law, and may be recognized as the geographic indication of lotus seed products. The
disputed trademark is consisted of the characters “XIANGLIAN”, corresponding pronunciation and graph, and18

the characters “XIANGLIAN” is the major reading and calling part of this trademark. The Defendant, locating inFujian, had business transactions with the lotus merchants of Hunan before application for the registration of thistrademark. It was aware that XIANGLIAN is the geographical indication of the lotus seed products, but it stillregistered it as the trademark other than the collective trademark and certification trademark. It is very easy tocause the public mistaking the product nature and source, falling into the scope of the prohibition in Article 16.1of the Trademark Law. Therefore, the registration of the disputed trademark for lotus seeds and similar products
shall be revoked.
2. Common name, including statutory and conventional generic name, is of standardized title generally
accepted in the state or industry to reflect the fundamental difference between two categories of commodities.
The evidence submitted by the Plaintiff cannot fully support that XIANGLIAN is the common name of lotus
seeds generally accepted in the country or industry. Causes and evidence presented by the Plaintiff fails to provethat the dispute trademark infringes the existing prior rights as mentioned in Article 31 of the Trademark Law.
To sum up, pursuant to Articles 16 and 43 of the Trademark Law and Article 41 of the Implementing Regulationsof the Trademark Law, the Trademark Review and Adjudication Board hereby revokes the registration of the
disputed trademark for some commodities.
10. Tags① Type of trial

Trademark dispute to the registration② Decision

Invalidation③ Type of bad faithFree Ride✓

Imitation by agents or people who have a prior relationship✓

Interference by a competing company
Lack of intention to use
Others19

【CNIPA-7】海棠湾 v. 海棠湾
1. Title

海棠湾 v. 海棠湾 (“海棠湾” trademark case)

2. Country

China

3. Court

The Supreme People’s Court

4. Case No.

Administrative Ruling (2013) Zhi Xing Zi No. 41 issued by the Supreme People’s
Court

5. Date of the judgment

2013/8/12

6. Parties : Plaintiff

Li Longfeng

Defendant

Trademark Review and Adjudication Board of the State Administration for
Industry and Commerce
Sanya Haitang Bay Management Committee

7. Mark

Plaintiff (disputed trademark)Defendant“海棠湾”
8. Outline of the case
Li Longfeng, taking advantage of the huge influence from the government’s promotion of Haitang Bay Vacation
Zone and the development program, applied for registration of many trademarks containing words “海棠湾” andregistered a large amount of other trademarks without any reasonable grounds or intention of real use. It shall beidentified as improper occupation of public resources and disturbance of the order of trademark registration due
to lack of the legitimacy required for trademark registration. Therefore, it shall be revoked pursuant to Article
41.1 of the Trademark Law.
9. Summary of the judgment
Basic Facts
Before Li Longfeng applied for registration of the disputed trademarks, the logo “海棠湾” had been awell-known place name in Sanya tourism resort and a name contained in large comprehensive development
projects under the government plans through long-term promotion by relevant government authorities of Hainan
province, and it has clear meaning and indication. As an individual person, Li Longfeng has applied forregistration of the disputed trademark not only for such services as lease and management of real estates
involved in the Case but also for Class 43 “restaurants, hotels and other commodities or services”. Additionally,
Li Longfeng has also registered more than 30 trademarks for many categories of products or services, such as“香水湾” and “椰林湾”, many of which concern place names and scenes of Hainan Island.
Opinions of the Court
The Supreme People's Court deems that, for the purpose of examination and judgment on whether the disputed
trademark is “registered by other unfair means” provided in Article 41.1 of the Trademark Law, it is necessary toverify whether means other than cheat that are applied, including disturbance of the order of trademark
20

registration, damage on public interests or unfair occupation of public resources. Pursuant to Article 4 of theTrademark Law, a civil subject applying for registration of a trademark shall have a real intention of use in order
to meet his own demands for trademark use and the application shall be reasonable or legitimate.
Li Longfeng, taking advantage of the huge influence from the government’s promotion of Haitang Bay Vacation
Zone and the development program, applied for registration of many trademarks containing words “海棠湾” andregistered a large amount of other trademarks without any reasonable grounds or intention of real use. It shall beidentified as improper occupation of public resources and disturbance of the order of trademark registration due
to lack of the legitimacy required for trademark registration. Therefore, the registration shall be revoked pursuant
to Article 41.1 of the Trademark Law.
10. Tags① Type of trial

Suit for the decision of TRAB of SAIC

② Decision

Invalidation③ Type of bad faithFree Ride✓

Imitation by agents or people who have a prior relationship
Interference by a competing company
Lack of intention to use✓

Others21

【CNIPA-8】WONDERWARE v. Wonderware
1. Title

WONDERWARE v. Wonderware

2. Country

China

3. Court

Trademark Review and Adjudication Board of the State Administration for
Industry and Commerce

4. Case No.

(2015) Shang Biao Yi Zi No. 0000007183

5. Date of the judgment

2015/4/29

6. Parties : Plaintiff

Invensys System Co., Ltd.

Defendant
7. Mark

Shenzhen Wondershare Information Technology Co., Ltd.
Plaintiff

Defendant (disputed trademark)8. Outline of the case
The Defendant’s application for registration of the disputed trademark has constituted bad-faith registration byillicit means of a trademark with a certain reputation already used by another party. If successfully registered, thedisputed trademark will cause relevant consumers mistaking the sources of the parties’ products and services.
9. Summary of the judgment
Basic Facts
The Plaintiff, Invensys System Co., Ltd., put forward an objection to Trademark No. 10271361,“WONDERWARE” which is held by the Defendant, Shenzhen Wondershare Information Technology Co., Ltd.
(formerly known as Shenzhen Fuxing Technology Co., Ltd.) and was reviewed by the Trademark Office andpublicized on the 1335th Trademark Announcement. The Trademark Office accepted the Case in accordancewith the Trademark Law. The Defendant replied within the designated period.
Opinion of the Trademark Office
The disputed trademark, “WONDERWARE”, is approved to use for the services in Class 42 “computer
programming; computer software design”. Trademark No. 1747975 “WONDERWARE”, early registered by the
Plaintiff, is approved to use for the commodities in Class 9 “computer software (recorded)”. The evidence
submitted by the Plaintiff proves that the computer software products carrying the cited trademark have been
actually used and have certain influence in relevant fields in China. In addition, the Plaintiff supplies relevant
services together with the sold products. The disputed trademark contains identical words with those containedin the cited trademark, and the approved applicable services are closely related with the commodities of thePlaintiff. Therefore, the Defendant’s application for registration of the disputed trademark has constituted
bad-faith registration by illicit means of a trademark with a certain reputation already used by another party. If
successfully registered, the disputed trademark will cause relevant consumers mistaking the sources of the22parties’ products and services.
Pursuant to Articles 32 and 35 of the Trademark Law, the Trademark Office decides not to register Trademark
No. 10271361, “WONDERWARE”.
10. Tags① Type of trial

Opposition to the registration② Decision

Ruling to reject the trademark application③ Type of bad faithFree Ride✓

Imitation by agents or people who have a prior relationship
Interference by a competing company
Lack of intention to use
Others23

【CNIPA-9】MEGAPULSE v. MEGAPULSEMEGAPULSE v. MEGAPULSE (Bad-faith registration of “MEGAPULSE”

1. Title

concerning contractual relationship)
2. Country

China

3. Court

The High People’s Court of Beijing

4. Case No.

Administrative Judgment (2015) Gao Xing (Zhi) Zhong Zi No. 3601

5. Date of the judgment

2016/1/11

6. Parties : Plaintiff

Yancheng Cross Electronics Co., Ltd. (hereinafter referred to as “Cross”)

Defendant

Trademark Review and Adjudication Board of the State Administration for
Industry and Commerce
Shanghai Qinling Wine Co., Ltd. (hereinafter referred to as “Qinling Wine”)"

7. Mark

Plaintiff (disputed trademark)Defendant

8. Outline of the case
Cross is aware of the trademark “MEGAPULSE” owned by Qinling Wine by means of indirect transactions with
Qinling Wine. However, Cross applied for registration of the disputed trademark for the same or similarcommodities as such trademark “MEGAPULSE” owned by Qinling Wine, violating Article 15.2 of theTrademark Law.
9. Summary of the judgment
Facts Finding
Trademark No. 9928480 “MEGAPULSE” applied by Cross for registration on September 5th, 2011, wasapproved applicable to the commodities Class 9 “storage battery, battery cage and pulse activator”. Qinling Winepermits Jiangsu Xinyang No. 2 Electronic Elements Factory (“Xinyang No.2 Factory”) to manufacture and sell
the pulse activator with the trademark “MEGAPULSE” which has been authorized by Qinling Wine. Xinyang
No.2 Factory concluded a sales contract for pulse activator in electro mobiles with Cai Zhongliang, the legal
representative of Cross without the consent of Qinling Wine. Cross submitted additional two copies of the“Power of Attorney” (both on September 28, 2009) during second instance, and the power of attorney bearing
the official seal of Xinyang No.2 Factory indicates that “Mr. Cai Zhongliang is hereby authorized to sell pulse
activator in electro mobiles manufactured by the Factory at the same price”. Thereafter, Qinling Wine further
submitted one copy of the Certification issued by Xinyang No.2 Factory on November 10, 2015, indicating “On
December 24, 2009, Xinyang No.2 Factory concluded a contract with Cai Zhongliang for sales of pulse
activators in electro mobiles and mobiles with the trademark ‘MEGAPULSE’, which were manufactured by
Xinyang No.2 Factory with Qinling Wine”.
24Judgment of the Court
Pursuant to Article 15.2 of the Trademark Law in 2013, where an applicant for registration of a trademark
identical with or similar to an unregistered trademark in prior use by another party on identical or similar goods
has any contractual, business or other relationship except the relationship described in the preceding paragraphwith the other party and knows the existence of the unregistered trademark, the trademark shall not be registered
upon opposition from the other party. For the purpose of such paragraph, the applicant has created other legal
relationship other than agency or representative with the other party prior to the date of application for the
disputed trademark, through which the applicant knew about the other party’s trademark and in bad faithregisters the unregistered trademark in prior used by another party on identical or similar goods. The disputed
trademark shall not be registered in such circumstance for violating the principle of good faith and constituting a
registration in bad faith and hitchhiking.
The evidence submitted proves that, prior to the date of application for the disputed trademark, Qinling Wineauthorized Xinyang No.2 Factory to manufacture and sell the pulse activators with the brand “MEGAPULSE”;
thereafter, Xinyang No.2 Factory concluded a contract with Cai Zhongliang for sales of pulse activators inelectro mobiles and mobiles under the trademark ‘MEGAPULSE’; however, Cross failed to explain clearly thatit had reasonable ground to apply for the disputed trademark. Since the letters contained in the disputed
trademark are identical with the trademark “MEGAPULSE”, a conclusion may be made that, prior to the date ofapplication for the disputed trademark, Cross had been aware of the trademark “MEGAPULSE” from pulse
activators on the basis of the legal relationship other than agency or representative. Considering the circumstancethat storage batteries, pulse activators and other commodities to which the disputed trademark is applied
constitute the same or similar commodities with the pulse activators under the trademark “MEGAPULSE” inprior use, application by Cross for registration of the disputed trademark has violated Article 15.2 of theTrademark Law in 2013. Although Cross submitted additional Power of Attorney during second instance, thePower of Attorney did not deny the fact that Xinyang No.2 Factory concluded a contract with Cai Zhongliang on
December 24, 2009 for sales of pulse activators under the trademark “MEGAPULSE”. The Power of Attorney
was issued on September 28, 2009, and Xinyang No.2 Factory had other contractual relationship with Cai
Zhongliang after September 28, 2009, therefore, relevant claims made by Cross lack for basis in fact and are
hereby rejected by the Court.
10. Tags① Type of trial

Suit for the decision of TRAB of SAIC

② Decision

Invalidation③ Type of bad faithFree Ride
Imitation by agents or people who have a prior relationship
Interference by a competing company
Lack of intention to use
Others25✓

【CNIPA-10】v.

1. Titlev.
2. Country

China

3. Court

The High People’s Court of Beijing

4. Case No.

Administrative Judgment (2016) Jing Xing Zhong Zi No. 1896

5. Date of the judgment

2016/5/31

6. Parties : Plaintiff

Jiangsu Xianghe International Investment Co., Ltd.

Defendant(“Xianghe”)

Trademark Review and Adjudication Board of the State Administration for
Industry and Commerce
Cölner Hofbräu P. Josef Früh KG(“KG”)

7. Mark

Plaintiff (disputed trademark)Defendant

8. Outline of the case
Registration in bad faith by the agents of Xianghe and KG of the beer trademark “FRUH KOLSCH 及图”
through collusion violates Article 15.1 of the Trademark Law.
9. Summary of the judgment
Fact Finding
Application for registration of Trademark No. 9150014 “FRUH KOLSCH SEIT 1904 及图”, submitted by
Xianghe on February 25, 2011, was approved applicable to the commodities Class 32 “beer; malt beer; wort forbeer”. KG owns the internationally registered trademark and Germany trademark of “FRUH KOLSCH 及图”.
On its website, Xianghe stated itself as the general agent of Fruh Kolsch beer in China; its subsidiary Xianghe(Germany) GmbH performed auxiliary services for Xianghe in Germany with respect to agency business of Fruh
Kolsch beer in China. Fruh Kolsch beer is called “福利红 Fruh Kolsch” in China. Fruh Kolsch top beer inGermany has existed for more than 100 years. The address of Xianghe (Germany) GmbH on its website is thesame as that of Defudao Company, which is the agent of KG in China. On September 23, 2010, an email(inscriber is Jiangsu Xianghe International Investment Co., Ltd.) sent from an email box “xiang.×××” to the26personnel of KG, concerning sales of 5 liters of barreled Fruh Kolsch beer in China as an agent. Xianghe
personnel had accepted training programs about Fruh Kolsch beer and were granted the training certificate by
KG.
Judgment of the Court
Pursuant to Article 15.1 of the Trademark Law, where an agent or a representative applies for registration of a
trademark of the principal or the represented party in the agent's or the representative's own name withoutauthorization, the trademark shall not be registered and shall be prohibited from use upon objection from theprincipal or the represented party. Where a trademark agent, a representative or an agent or a representative
under the distributorship or agency relationship applies, in its name, for registration of a trademark of theprincipal or the represented party without authorization, the People’s Court shall determine it constitutes a
bad-faith registration of the trademark of the principal or the represented party by the agent or the representative.
In trial practice, bad-faith registration may occur during negotiation about the agency or representative
relationship, namely, bad-faith registration prior to establishment of the agency or representative relationship. In
such case, it shall be deemed as bad-faith registration by the agent or the representative. The applicant registering
the trademark in bad faith through collusion with the aforesaid agent or representative may be deemed as theagent or representative. Registration in bad faith through collusion may be determined on the basis of special
personal relationship between the applicant and the aforesaid agent or the representative.
Evidence submitted for the Case proves that, prior to the date of application for the disputed trademark, Xianghe
negotiated with KG about Fruh Kolsch beer. Although it was Defudao Company that concluded a cooperationagreement with KG, Xianghe stated on its website that its subsidiary Xianghe (Germany) GmbH performed
auxiliary services for Xianghe in Germany with respect to agency business of Fruh Kolsch beer in China and thatthe address of Xianghe (Germany) Co., Ltd. is the same as that of Defudao Company, therefore, a conclusion
may be made that Xianghe also took part in bad-faith registration of the trademark of “Fruh Kolsch” owned by
KG through collusion with Defudao Company. Accordingly, application for registration of the disputed
trademark violates Article 15.1 of the Trademark Law.
10. Tags① Type of trial

Suit for the decision of TRAB of SAIC

② Decision

Ruling to reject the trademark application③ Type of bad faithFree Ride✓

Imitation by agents or people who have a prior relationship✓

Interference by a competing company
Lack of intention to use
Others27

【CNIPA-11】华为 NOVA v. VAVI 华为
1. Title

华为 NOVA v. VAVI 华为

2. Country

China

3. Court

Trademark Office

4. Case No.

37015716

5. Date of the judgment

2019/9/5

6. Parties: Third-party

Huawei Technologies Co.,Ltd.

Applicant
7. Mark

Chen Hongmei
Reference Trademark

Disputed Trademark

8. Outline of the caseA case in which the applicant of the disputed trademark has obvious intention of imitating or copying
third-party’s trademarks and is determined as having been obtained contrary to ethics of business.
9. Summary of the judgment
The disputed trademark is extremely similar to the existing prior trademark of the third-party. The applicant hasapplied for registration of many trademarks which are identical with or similar to other parties’ existing priortrademarks.
The applicant of the disputed trademark has obvious intention of imitating or copying third-party’s trademarks,
which disputes the normal order of trademark registration management and harms the market order of faircompetition.
10.Tags① Type of trial

Examination② Decision

Refusal③ Type of bad faithFree Ride✓

Imitation by agents or people who have a prior relationship
Interference by a competing company
Lack of intention to use✓

Others28

【CNIPA-12】MOTO RETA v. MOTO RETA
1. Title

MOTO RETA v. MOTO RETA

2. Country

China

3. Court

Trademark Office

4. Case No.

18021136

5. Date of the judgment

2018/3/29

6. Parties:

Plaintiff

MOTORETA MODA INFANTIL SOCIEDAD LIMITADA

Defendant

LEE EUNSIK

7. Mark

Plaintiff

Defendant (disputed trademark)8. Outline of the caseA case in which the defendant’s application of the trademark bears obvious intention of imitating and copying
the opposer’s trademarks, which violates the ethics of good faith and disputes the normal order of trademark
registration management.
9. Summary of the judgment
The defendant’s trademark is extremely similar to the trademark of the plaintiff which is original and was
registered in Spain on Dec. 30, 2014.
The defendant has applied for registration of nearly 900 trademarks on various goods. Most of them are refused
because the trademarks are identical with or similar to other parties’ existing prior trademarks. About 80
trademark applications had been opposed, most of which are identical with or similar to other parties’ existingprior trademarks, and got the decision of no registration.
The applicant of the disputed trademark has no intention to use and has obvious intention of imitating or copying
third-party’s trademarks, which disputes the normal order of trademark registration management and harms themarket order of fair competition.
10.Tags① Type of trial

Opposition② Decision

No registration③ Type of bad faithFree Ride✓

29

Imitation by agents or people who have a prior relationship
Interference by a competing company
Lack of intention to use✓

Others30

【CNIPA-13】高山别庄 v. 高山别庄
1. Title

高山别庄 v. 高山别庄

2. Country

China

3. Court

Trademark Office

4. Case No.

19638921

5. Date of the judgment

2018/5/23

6. Parties:

Plaintiff

High Mountain Resort Shangri-La Hotel Co.,Ltd.

Defendant

Hangzhou Sanwu Technology Co.,Ltd.

7. Mark

Plaintiff

Defendant(disputed trademark)8. Outline of the caseA case in which the defendant who has specific relations with the plaintiff applied for registration of a trademark
which is identical with the plaintiff’s existing prior service mark without authorization.
9. Summary of the judgment
The plaintiff submits evidences including the company registration information of defendant ,the investment andemployment report of a shareholder of the defendant, the mail record between the plaintiff and the shareholder,
the contract and invoice of conducting the plaintiff’s hotel official website online and official account on
Wechat,etc.
The evidences prove that the shareholder of the defendant had business relationship with the plaintiff .Therefore
the defendant would be aware of the plaintiff’s existing prior service mark.
Without authorization, the defendant who has specific relations with the plaintiff applied for registration of a
trademark which is identical with plaintiff’s existing prior service mark and the designated service is closely
related to the service performed by the plaintiff.
10.Tags① Type of trial

Opposition② Decision

No registration③ Type of bad faithFree Ride
Imitation by agents or people who have a prior relationship31✓

Interference by a competing company
Lack of intention to use
Others32

【CNIPA-14】伊顿 v. 伊顿公学
1. Title

伊顿 v. 伊顿公学（Eton College）

2. Country

China

3. Court

Trademark Office

4. Case No.

3068234/3068235

5. Date of the judgment

2019/6/20

6. Parties: Plaintiff

Beijing Yongan Shida Trade Co.,Ltd.

Defendant
7. Mark

Etonhouse International Holdings Pte.,Ltd.
Plaintiff

Defendant (disputed trademark)8. Outline of the caseA case in which the defendant’s registered trademark is determined as having been obtained contrary to ethics ofgood faith and being liable to cause confusion with services connected with another party’s business.
9. Summary of the judgment
The defendant’s trademark is identical with the Chinese translation of Eton College which had become awell-known exclusive private school in Britain. The disputed trademark is designated to be used on service of
education and children care which is liable to cause confusion with the quality or other characteristics of theservice.
Besides the disputed trademark, the defendant has applied for registration of several trademarks which aresimilar to or identical with the Chinese translation of famous Britain universities like University of Cambridgeand University of Wolverhampton and the designated service is closely related to the service of education andchildren care.
Based on a comprehensive evaluation of these facts, it may be recognized that the applicant of the disputed
trademark lacks intention to use and violates the ethics of good faith, disputes the normal order of trademark
registration management and harms the market order of fair competition.
10.Tags① Type of trial

Invalidation② Decision

Invalidation③ Type of bad faith33

Free Ride
Imitation by agents or people who have a prior relationship
Interference by a competing company
Lack of intention to use✓

Others34

【CNIPA-15】道奇 v. 道奇战斧
1. Title

道奇 v. 道奇战斧 DODGE TOMAHAWK

2. Country

China

3. Court

Trademark Office

4. Case No.

14549887

5. Date of the judgment

2019/6/13

6. Parties: Plaintiff

FCA US LLC

Defendant
7. Mark

HongKong Jiabaolong Trading Co.,Ltd.
Plaintiff

Defendant (disputed trademark)8. Outline of the caseA case in which the defendant’s registered trademark has obvious intention of imitating or copying third-party’s
trademarks and is determined as having been obtained contrary to ethics of business.
9. Summary of the judgment
The plaintiff’s trademark is original and well-known. The trademark of the defendant consists of two main
trademarks of the plaintiff. The defendant has applied for registration of nearly 260 trademarks on various goods
and services, most of which are identical with or similar to other parties’ existing prior famous trademarks.
The applicant of the disputed trademark has obvious intention of imitating or copying third-party’s trademarks
and free-riding the reputation of the plaintiff, which disputes the normal order of trademark registration
management and harms the market order of fair competition.
10.Tags① Type of trial

Invalidation② Decision

Invalidation③ Type of bad faithFree Ride✓

Imitation by agents or people who have a prior relationship
Interference by a competing company
Lack of intention to use

35

Others

36

Case Examples of EUIPO

37

【EUIPO-1】BALBCARE v. BALBCARE
1. Title

BALBCARE v. BALBCARE

2. Country

European Union

3. Court

Cancellation Division (EUIPO first instance)

4. Case No.

9805 C

5. Date of the judgment

2015/9/14

6. Parties : Plaintiff

Balbpharm Industria de Cosméticos Ltda.

Defendant
7. Mark

3B.Solutions
Plaintiff

Defendant (disputed trademark)BALBCARE

BALBCARE

8. Outline of the case
The Cancellation Division (CD) declared invalid the registration of the EUTM as it was applied for in bad faith.
No appeal was filed before EUIPO Boards of Appeal
9. Summary of the judgment
The Invalidity applicant is the owner of the Brazilian TM BALBCARE for nail care products in Class 3. It
exported its products to the EU since 2011.
In 2011 it signed a distribution agreement in the EU with the (future) EUTM proprietor, who applied for a FR
mark BALBCARE in July 2011 and an EUTM in 2014.
By late 2011, the distribution agreement was suspended.
The owner of the Brazilian TM requested the invalidity of the EUTM because it was registered in bad faith. The
Cancellation Division declared that the invalidity applicant cannot be expected to prove a negative fact, such as
the absence of consent. A mere statement that the filing was made without its consent is generally sufficient.
It is the EUTM proprietor who has to prove that the filing was authorized.
The finding of bad faith does not require a contractual relationship at the time of filing. A direct or indirect
relationship between the parties prior to the filing may be enough.
The Cancellation Division declared the mark invalid. No appeal was filed.
10. Tags① Type of trial

Suit against decision of trial for invalidation② Decision

Invalidation③ Type of bad faithFree Ride
Imitation by agents or people who have a prior relationship
Interference by a competing company
Lack of intention to use
Others38✓

【EUIPO-2】Camomilla v. CAMOMILLA
1. Title

Camomilla v. CAMOMILLA

2. Country

European Union

3. Court

General Court of the European Union (EGC)

4. Case No.

Joint cases T-98/13 and T-99/13

5. Date of the judgment

2015/7/9

6. Parties : Plaintiff

C.M.T. - Compagnia Manifatture Tessili S.r.l.

Defendant
7. Mark

EUIPO [OHIM at the time the judgment was rendered]
EU trade mark proprietor (disputed

Invalidity applicant

trademark)8. Outline of the case
An invalidity applicant claimed before EUIPO (called OHIM at the time) that the EU trade marks above had
been registered in bad faith. After EUIPO dismissed its request, the invalidity applicant brought an action before
the General Court alleging inter alia that EUIPO had infringed Article 52(1) (b) of the EU trade markRegulation. The Court dismissed the appeal.
9. Summary of the judgment
The Court confirmed that the three factors set out in the judgment C-529/07, Chocoladefabriken Lindt & Sprüng(identity/confusing similarity of the signs; knowledge of the use of an identical or confusingly similar sign, anddishonest intention on the part of the EU trade mark proprietor) are only examples drawn from a number offactors which can be taken into account in order to decide whether the EU trade mark proprietor was acting in
bad faith at the time of filing the application.
For example, account may also be taken of the commercial logic underlying the filing of the EUTM applicationand the chronology of events relating to the filing (paras. 37-42).
The Court recalled that the mere knowledge of the earlier marks is not sufficient, in itself, to conclude that the
EU trade mark proprietor was acting in bad faith.

In order to determine whether there was bad faith,consideration must be given to the EU trade mark proprietor’s intention at the time when of filing of the EUTM
application. It is a subjective factor which must be determined by reference to the objective circumstances of theparticular case.
However, the invalidity applicant only argued that the disputes between the parties proved the conscious anddeliberate intention of the EU trade mark proprietor to appropriate the Camomilla mark, previously used andregister by the invalidity applicant.
39

The Court found that the existence of a previous dispute between the parties does not show per se that the party
that registered its national mark also as an EU trade mark acted in bad faith. It also found that there was noevidence showing that the invalidity applicant had the intention to exploit its national mark in in the market
sectors at issue, nor that the EU trade mark proprietor knew about that intention at the relevant time (paras.
46-50). Good faith is presumed until proof to the contrary is adduced. Therefore, the invalidity applicant needs toprove that there was bad faith on the part of the EU trade mark proprietor at the time of filing. Consequently, theinvalidity applicant’s observations, devoid of any evidence to support them, are not sufficient for proving bad
faith from the EU trade mark proprietor (para. 51).
10. Tags① Type of trial

Suit against decision of trial for invalidation② Decision

Maintenance of the trademark registration③ Type of bad faithFree Ride✓

Imitation by agents or people who have a prior relationship
Interference by a competing company
Lack of intention to use
Others40

【EUIPO-3】COLOURBLIND v. COLOURBLIND
1. Title

COLOURBLIND v. COLOURBLIND

2. Country

European Union

3. Court

General Court of the European Union (EGC)

4. Case No.

T-257/11

5. Date of the judgment

2015/2/26

6. Parties : Plaintiff

Pangyrus Ltd.

Defendant
7. Mark

EUIPO [OHIM at the time the judgment was rendered]
EU trade mark proprietor(disputed

Invalidity applicant

trademark)

COLOURBLIND
8. Outline of the case
An invalidity applicant claimed before EUIPO (called OHIM at the time) that the EU trade mark
COLOURBLIND had been registered in bad faith. After EUIPO dismissed its request, the invalidity applicant
brought an action before the General Court alleging inter alia that EUIPO had infringed Article 52(1) (b) of the
EU trade mark Regulation. The Court dismissed the appeal.
9. Summary of the judgment
The ‘COLOURBLIND’ product (consisting of an ‘“experimental learning” toolbox’) was invented in 1991 by aphysical person, a Mr C. (main shareholder and director of the EU trade mark proprietor at the time of theinvalidity application), who in 1993 had set up the invalidity applicant’s company, Mr C. holding 99% of thelatter’s shares. Although Mr. C. was closely and continuously involved, from 1991 until 2003, in activities
leading to the use of ‘COLOURBLIND’ by the invalidity applicant first and later by another connected company,
and was therefore necessarily aware of that use, the Court noted that such awareness on his part was not
sufficient, in itself, to establish that the EU trade mark proprietor (whom Mr. C. controlled) acted in bad faith.
The Court dismissed the invalidity applicant’s argument that Mr C.’s aim in filing the application for registrationof the contested trade mark was to ‘lay his hands’ on the trade mark of a third party which he had had contractualor pre-contractual relations with. In that respect, the Court held that, due to the connections between Mr C. andthe invalidity applicant (the former holding in the early 90’s 99% shares of the latter), the invalidity applicant
could not be described as a third party in relation to Mr C. The Court also found that the main item of evidence
relied upon by the invalidity applicant (a share purchase agreement) in order to argue that the rights in thecontested mark had been assigned to it by Mr. C. only contained a generic reference to ‘warranties’ and‘intellectual property’ and that there was no mention of ‘COLOURBLIND’ in that agreement. The Court went on
to note that, even assuming that the sign ‘COLOURBLIND’ was covered by that agreement, all that was
mentioned with regard to the invalidity applicant was its being the beneficial owner of rights in that sign, not thatit had legal title to those rights [‘beneficial owner’ is a legal term from English law used to indicate where41specific property rights in equity belong to a person even though the legal title of the property belongs to anotherperson]. The Court added that, if there was an agreement between Mr C. and the invalidity applicant concerning
the use of ‘COLOURBLIND’, it is possible that, owing to its implied or informal nature, it was not mentioned in
the mentioned share purchase agreement. The Court held that, in the light of the evidence produced, it could not
be excluded that Mr C. considered himself to have rights in the sign ‘COLOURBLIND’ up until the moment of
its transfer to the EU trade mark holder and that both the invalidity applicant and a third, connected company
that had later made use of the sign were acting under an implied or informal agreement on the part of Mr C
(paras. 78-135).
10. Tags① Type of trial

Suit against decision of trial for invalidation② Decision

Maintenance of the trademark registration③ Type of bad faithFree Ride
Imitation by agents or people who have a prior relationship
Interference by a competing company
Lack of intention to use
Others42✓

【EUIPO-4】Doggis v. Doggis
1. Title

Doggis v. Doggis

2. Country

European Union

3. Court

General Court

4. Case No.

T-335/14

5. Date of the judgment

2016/1/28

6. Parties : Plaintiff

Mr. Davo Lledo

Defendant
7. Mark

EUIPO
Plaintiff

Defendant(disputed trademark)8. Outline of the case
The Board of Appeal declared invalid the registration of the EUTM as it was applied for in bad faith. The
General Court confirmed this decision.
9. Summary of the judgment
The invalidity applicants invoked a number of earlier marks DOGGIS that they had registered in Chile and
Uruguay. When they tried to register the mark DOGGIS in Spain, they found that it had been registered for thesame services and with identical graphic element in Spain, in the EU, and also as an International Registration.
They claimed that the EU mark had been applied for in bad faith. The Cancellation Division rejected theinvalidity application, but the Board of Appeal declared the registration invalid. It found that, at the time of the
EUTM application, the EUTM applicant was aware of the existence of the earlier figurative Chilean marks,
identical to the sign applied for. The Board found that such a coincidence could not be the result of a fortuitous
identity.

The General Court confirms the findings of the Boardof Appeal.

※The Board of Appeal declared invalid the registration of the EUTM as it was applied for in bad faith. The
General Court confirmed this decision.
10. Tags① Type of trial

Suit against decision of trial for invalidation② Decision

Invalidation③ Type of bad faithFree Ride✓

Imitation by agents or people who have a prior relationship43Interference by a competing company
Lack of intention to use
Others44

【EUIPO-5】GUGLER v. GUGLER
1. Title

GUGLER v. GUGLER

2. Country

European Union

3. Court

General Court of the European Union (EGC)

4. Case No.

T 674/13

5. Date of the judgment

2016/1/28

6. Parties : Plaintiff

Gugler France

Defendant
7. Mark

OHIM
EU trade mark proprietor(disputed

Invalidity applicant

trademark)

GUGLER
8. Outline of the case
An invalidity applicant claimed before EUIPO (called OHIM at the time) that the EU trade mark above had beenregistered in bad faith. After EUIPO dismissed its request, the invalidity applicant brought an action before theGeneral Court alleging inter alia that EUIPO had infringed Article 52(1) (b) of the EU trade mark regulation. The
Court did not examine the bad faith issue. The decision of the Board of Appeal denying that the EUTM wasregistered in bad faith remains valid.
9. Summary of the judgment
According to the Board of Appeal of the EUIPO, nothing in the facts of the case showed that Gugler GmbH filed
the contested EUTM in bad faith, even though there had been previous business relations between the parties.
The Board noted that in 2003, Gugler GmbH had already been producing and exporting the relevant products‘under the name GUGLER’ for many years. Therefore, applying for an EUTM was an obvious and completely
justified action which did not reveal bad faith.
10. Tags① Type of trial

Suit against decision of trial for invalidation② Decision

Maintenance of the trademark registration③ Type of bad faithFree Ride
Imitation by agents or people who have a prior relationship
Interference by a competing company
Lack of intention to use
Others45✓

【EUIPO-6】LLRG5 v. LLRG5
1. Title

LLRG5 v. LLRG5

2. Country

European Union

3. Court

General Court of the European Union (EGC)

4. Case No.

T-306/13

5. Date of the judgment

2015/6/16

6. Parties : Plaintiff

Silicium España Laboratorios, SL

Defendant
7. Mark

EUIPO [OHIM at the time the judgment was rendered]
EU trade mark proprietor(disputed

Invalidity applicant

trademark)

LLRG5
8. Outline of the case
An invalidity applicant claimed before EUIPO (called OHIM at the time) that the EU trade mark LLRG5 hadbeen registered in bad faith. After EUIPO upheld the invalidity application, the EU trade mark proprietor brought
an action before the General Court alleging inter alia that EUIPO had infringed Article 52(1) (b) of the EU trade
mark regulation. The Court dismissed the appeal.
9. Summary of the judgment
Mr. I had sought to register the word sign LLRG5 as an EU trade mark, acting as an intermediary of Mr. R, oneof the shareholders of the invalidity applicant. Before the mark was granted, the intermediary requested EUIPO
to register the assignment of the EU trade mark application to Mr. R. The change of proprietor was registeredand published. Mr. R. and the invalidity applicant concluded an agreement that would confer to the latter an
exclusive license which stated, inter alia, that Mr. R. would not authorize others to use the names “LLRG5” or“G5”. After Mr. R´s death, the invalidity applicant filed with EUIPO an application for registration of thetransfer of the EU trade marl LLRG5, based on said agreement. The application was refused on the ground thatthe agreement did not state that Mr. R had actually transferred the contested mark to the invalidity applicant.
Said EU trade mark had meanwhile been transferred to the EU trade mark proprietor MR C. The Board of
Appeal found that Mr R, as beneficial applicant, had acted in bad faith when instructing an intermediary to filean application for registration of the contested trade mark. Before the General Court, the actual EUTM
proprietor, Mr. C., put forward that Mr. R. had a legitimate interest in applying for the registration of that markand disputed the probative value of matters that were taken into consideration by EUIPO when it concluded thatthe mark had been registered in bad faith (para. 40). The Court rejected this argument since the invalidity
applicant produced a formal statement by its representative, made before a solicitor, as well as a set of
documents which contained his opinion that the application for registration of the EU trade mark was made in46

bad faith due to the fact that the filing was made without the knowledge of the invalidity applicant (paras.
42-43). With regard to the probative value of the statement, the Court pointed out that, although it did not fallwithin the category of self-supporting evidence, it was substantiated by the documents that were submitted to
EUIPO (para. 46). The Court found that it was apparent from the case file that Mr. R. could not have been
unaware that the invalidity applicant used the sign LLRG5 as its company name (para. 47). Furthermore,
although it was not possible to establish with certainty what was the common intention between the parties withregard to the sign, no evidence was provided that could lead to the conclusion that Mr. R. had reserved rights tohimself over that name (para. 52). Therefore, the EU trade mark proprietor did not prove the existence of the
exclusive rights it alleged (Para. 58). The Court stated that Mr. R. did not give the invalidity applicant thepossibility of considering whether it was appropriate to oppose the application for registration of the sign at
issue, which led to the finding that the application could be held to be a “concealed act”, carried out through anintermediary, with the intention of preventing the invalidity applicant from being able to use the sign (para. 71).
In this light, the application for registration of the contested mark was made in bad faith (para. 73).
10. Tags① Type of trial

Suit against decision of trial for invalidation② Decision

Invalidation③ Type of bad faithFree Ride
Imitation by agents or people who have a prior relationship
Interference by a competing company
Lack of intention to use
Others47✓

【EUIPO-7】LUCEO v. LUCEA LED
1. Title

LUCEO v. LUCEA LED

2. Country

European Union

3. Court

General Court

4. Case No.

T825/14

5. Date of the judgment

2016/7/7

6. Parties : Plaintiff

Copernicus-Trademarks Ltd.

Defendant
7. Mark

EUIPO
Plaintiff (disputed trademark)

LUCEO

Intervener

LUCEA LED

8. Outline of the case
The Cancellation Division (CD) and the Board of Appeal (BoA) declared invalid the registration of the EUTM
as it was applied for in bad faith. The General Court confirmed this decision.
9. Summary of the judgment
Copernicus, represented by Mr A., filed an application for registration of the word mark LUCEO (Class 10, 12,28) in September 2009. It claimed priority from an Austrian application for the word mark LUCEO filed in
March 2009 for the same goods. Two months later it filed an opposition against the application for registrationof the EUTM LUCEA LED (applied for by the intervener or invalidity applicant).
The EUTM LUCEO was registered in October 2010. Subsequently, the intervener (who applied for theregistration of the EUTM LUCEA LED) requested that the LUCEO EUTM be declared invalid, as Copernicus
had acted in bad faith. Both the CD and the BoA found that the mark had been applied for in bad faith.
The General Court (GC) confirms the findings of the Board of Appeal.
Copernicus and Mr A. pursued an unlawful filing strategy, consisting in successively chaining together
applications for registration of national trade marks in Austria and Germany seeking to claim priority for an
application of an EUTM and to grant a blocking position to Mr A. in order to oppose applications for registrationof EUTM filed by third parties (p. 35-39 of the judgment).
The GC found this filing strategy incompatible with the objectives of the EUTM Regulation and qualified it as
an abuse of law (p. 52). It also noted that Mr A. stated that he did not intend to use the mark at issue and was
unable to indicate the name of the clients who expressed an interest in that mark and requested payment of 75000 € from the intervener. Bad faith exists inter alia where trade mark applications are diverted from their initial
purpose and filed speculatively or solely with a view to obtain financial compensation (p. 145).

※The Board of Appeal declared invalid the registration of the EUTM as it was applied for in bad faith. The
General Court confirmed this decision.

48

10. Tags① Type of trial

Suit against decision of trial for invalidation② Decision

Invalidation③ Type of bad faithFree Ride
Imitation by agents or people who have a prior relationship
Interference by a competing company
Lack of intention to use✓

Others✓49

【EUIPO-8】v.

1. Titlev.
2. Country

European Union

3. Court

Cancellation Division (EUIPO first instance)

4. Case No.

9634 C

5. Date of the judgment

2015/9/9

6. Parties : Plaintiff

Thierry Khayat

Defendant
7. Mark

Sandys S.r.l.
Plaintiff

Defendant(disputed trademark)8. Outline of the case
The Cancellation Division (CD) declares invalid the registration of the EUTM as it was applied for in bad faith.
An appeal is pending before EUIPO Boards of Appeal
9. Summary of the judgment
In May 2008, Mr. A.T., vice president of the bankrupt Tacchini Group, assigned the French mark VdeV
reproduced above to H4T S.r.l. In December 2008, Ms. G.T. applied for registration of the VdeV mark in Italy. In
June 2009 Ms. G.T. filed for a EUTM, with priority based on the Italian application.
In 2012, Ms. G.T. transferred the Italian and the EU marks VdeV to SANDYS S.r.l., whose CEO is Mr. A.
Tacchini., represented by a law firm where one of the partners is Ms. G.T.'s husband. Ms. G.T. worked with thatlaw firm since 2010.
The Cancellation Division had to establish two questions: (1) whether the current owner, SANDYS, is a bonafide owner, (2) whether Ms. G.T. applied for the EUTM independently and in good faith or whether she did so
on behalf of the current owner.
CD: it is strongly against honest commercial practice that a person who led a company into insolvency and had
to sell its TMs, would acquire the same (with geographically extended protection) just by creating a newcompany.

In view of all the circumstances taken together, the current owner SANDYS (whose CEO is Mr. A.

Tacchini) should be considered to be the real applicant for the contested EUTM. Bad faith implies proving that at
the time of filing, the EUTM owner was aware that it was causing harm to the invalidity applicant and that thisharm was a consequence of its reproachable conduct from a moral o commercial point of view.
Mr. A. Tacchini, CEO of the EUTM owner, must have been aware that it is ethically unacceptable and contrary
to honest and fair commercial practices for his new company to own the CTM identical to the national marksthat he transferred to a third party when his other company was insolvent.

※The Board of Appeal declared invalid the registration of the EUTM as it was applied for in bad faith. The
50

General Court confirmed this decision.
10. Tags① Type of trial

Suit against decision of trial for invalidation② Decision

Invalidation③ Type of bad faithFree Ride
Imitation by agents or people who have a prior relationship
Interference by a competing company✓

Lack of intention to use
Others✓51

【EUIPO-9】SIMCA v. SIMCA
1. Title

SIMCA v. SIMCA

2. Country

European Union

3. Court

General Court of the European Union (EGC)

4. Case No.

T-327/12

5. Date of the judgment

2014/5/8

6. Parties : Plaintiff

Simca Europe Ltd.

Defendant
7. Mark

EUIPO [OHIM at the time the judgment was rendered]
EU trade mark proprietor(disputed

Invalidity applicant

trademark)SIMCA
8. Outline of the case
An invalidity applicant claimed before EUIPO (called OHIM at the time) that the EU trade mark SIMCA had
been registered in bad faith. After EUIPO upheld the invalidity application, the EU trade mark proprietor brought
an action before the General Court alleging inter alia that EUIPO had infringed Article 52(1) (b) of the EU trade
mark regulation. The Court dismissed the appeal.
9. Summary of the judgment
According to the General Court, in order to establish bad faith account may be taken of the origin of the word or
the sign which forms the mark at issue and of the earlier use of that word or sign in business as a mark, inparticular by competing undertakings, and of the commercial logic underlying the filing of the application forregistration of that word or that sign as an EU trade mark (para. 38 and 39). The mark SIMCA has been used forcars since 1930 and the invalidity applicant has trademark protection for SIMCA in different Member States as
France, Germany, Spain etc. for goods in class 12. However, the mark has not been used since 1980 (para. 42).
At the date of filing of the EUTM, the mark still had a certain degree of reputation among the public interested incars. The EU trade mark proprietor knew this residual reputation of the SIMCA marks and was looking for an
appropriate mark which was no longer used and which accordingly had no legal protection (paras. 45 - 53).
The Court finally concluded that the real purpose of the EU trade mark proprietor was to ‘free-ride’ on the
reputation of the invalidity applicant’s registered marks and to take advantage of that reputation (para 56). The
judgement emphasizes that the clear and evident intention to take advantage of the residual reputation of the sign
SIMCA on the motor vehicle market, to create an association with the earlier marks and to compete with thoseearlier marks if they were re-used by the invalidity applicant is to be considered as bad faith in the sense of
Article 52 (1) (b) of the EU trade mark Regulation (para 63). This conclusion is not based on the “offer ofcompensation” to the invalidity applicant (para. 70). The fact that the EU trade mark proprietor had started theuse of the registered SIMCA mark is not relevant (para. 74). Also the fact, that the EU trade mark proprietor
worked in the past for the invalidity applicant is not decisive for the outcome (para. 79).
52

10. Tags① Type of trial

Suit against decision of trial for invalidation② Decision

Invalidation③ Type of bad faithFree Ride✓

Imitation by agents or people who have a prior relationship
Interference by a competing company
Lack of intention to use
Others53

【EUIPO-10】URB v. URB
1. Title

URB v. URB

2. Country

European Union

3. Court

General Court of the European Union (EGC)

4. Case No.

T-506/13

5. Date of the judgment

2014/11/7

6. Parties : Plaintiff

Urb Rulmenti Suceava SA

Defendant
7. Mark

EUIPO [OHIM at the time the judgment was rendered]
EU trade mark proprietor(disputed

Invalidity applicant

trademark)URB
8. Outline of the case
An invalidity applicant claimed before EUIPO (called OHIM at the time) that the EU trade mark URB had beenregistered in bad faith. After EUIPO dismissed its request, the invalidity applicant brought an action before theGeneral Court alleging inter alia that EUIPO had infringed Article 52(1) (b) of the EU trade mark regulation. The
Court dismissed the appeal.
9. Summary of the judgment
The General Court recalled that, in assessing whether a mark has been registered in bad faith, account may also
be taken of the commercial logic underlying the filing of the application for registration of an EU trade mark.
Even in circumstances where several producers were using, on the market identical or similar signs for identicalor similar products, capable of being confused with the sign for which registration was sought, the EU trade
mark proprietor’s registration of the sign may still be in pursuit of a legitimate objective (para. 35).
The Court held that it was understandable from a commercial point of view that the EU trade mark proprietor
wished to extend the protection of the URB trade mark by registering it as an EU trade mark. In that respect, theevidence on file showed that, during the period which preceded the filing, the EU trade mark proprietor used thetrade mark, through a connected company, and generated turnover from goods marketed under the trade mark inseveral Member States, which was a plausible incentive for filing an application for the registration of an EU
trade mark (para. 41). The invalidity applicant did not establish that it was the EU trade mark proprietor’s
intention to exclude it from the market (para. 44). The fact that the EU trade mark proprietor knew or shouldhave known that a third party (i.e. the invalidity applicant in this case) has long been using, in at least one
Member State, an identical or similar sign for an identical or similar product capable of being confused with thesign for which registration is sought is not sufficient, in itself, to permit the conclusion that the EU trade markproprietor was acting in bad faith when filing the application (para. 47).
10. Tags
54

① Type of trial

Suit against decision of trial for invalidation② Decision

Maintenance of the trademark registration③ Type of bad faith ( Free Ride ✓)Free Ride✓

Imitation by agents or people who have a prior relationship
Interference by a competing company✓

Lack of intention to use
Others55

【EUIPO-11】Mr. Arrigo Cipriani v. CIPRIANI
1. Title

Arrigo Cipriani v. Hotel Cipriani

2. Country

European Union

3. Court

General Court

4. Case No.

T-343/14

5. Date of the judgment

2017/6/29

6. Parties :Plaintiff

Arrigo Cipriani

Defendant

Hotel Cipriani Srl

7. Mark

Plaintiff

Defendant (Disputed trademark)Mr. Arrigo Cipriani

CIPRIANI8. Outline of the case
The Defendant, Hotel Cipriani Srl, applied for the European Union trade mark for the word CIPRIANI in Classes 16,
35 and 42 (registered in 1997).
The Hotel Cipriani in Venice had been established by the father of the Plaintiff in 1956. The shares in the company
owning the hotel were later transferred to another company, which subsequently sold them to the Defendant.
9. Summary of the judgment
Mr Arrigo Cipriani requested that the disputed trademark be annulled on a number of grounds, inter alia because it
had been applied for in bad faith. EUIPO’s Cancellation Division and Board of Appeal rejected the invalidity request.
Mr Cipriani brought an action before the General Court.

The Defendant was also the proprietor of an Italian word mark CIPRIANI, registered in 1971 in Classes 29, 30, 32, 33
and 42.
The General Court ruled that, extending the protection of a national mark by registering it as a European Union trade
mark is part of an undertaking’s normal commercial strategy. This cannot be assimilated to an act of bad faith at thetime of application for registration of the European Union trade mark CIPRIANI in 1996.
10. Tags① Type of trial

Suit against decision of trial for invalidation② Decision

Refusal of invalidation③ Type of bad faithFree Ride
Imitation by agents or people who have a prior relationship
Interference by a competing company
Lack of intention to use
Others56✓

v【EUIPO-12】
1. Title

Biernacka-Hoba v Formata Bogusław Hoba

2. Country

European Union

3. Court

General Court

4. Case No.

T-23/16 (ECLI:EU:T:2017:149)

5. Date of the judgment

2017/3/08

6. Parties :Plaintiff

Ilona Biernacka-Hoba

Defendant

Formata Bogusław Hoba

7. Mark

Plaintiff

Defendant (Disputed trademark)8. Outline of the case
The case concerns an invalidity action between ex-spouses who had previously run a family business.
The Plaintiff argues that both parties used to be the proprietor of a Polish trade mark which had expired, and that the
new trade mark application came after their divorce but before the division of property between them, and therefore
the right to the trade mark could not belong to the Defendant.

9. Summary of the judgment
The Plaintiff (former wife) filed a request for a declaration of invalidity against the EUTM ‘FORMATA’ registered byher former husband (the Defendant). She invoked her husband’s bad faith when registering the European Union trade
mark. The Board of Appeal rejected the Plaintiff’s invalidity action.
An action was filed before the General Court, claiming infringement of Article 52(1)(b) EUTMR.

The General Court confirmed the Board of Appeal’s decision. The fact that the Defendant did not make any
submissions before the EUIPO in reply to the invalidity request does not lead to a presumption of bad faith.
It is the Plaintiff who has to prove that the Defendant acted in bad faith when applying for the disputed trademark. As
regards the specific circumstances of the case, in particular the divorce of the parties and the division of property
between them, the Plaintiff failed to submit sufficient evidence to demonstrate bad faith on the part of the Defendant.

10. Tags① Type of trial② Decision③ Type of bad faithFree Ride

57

Imitation by agents or people who have a prior relationship
Interference by a competing company
Lack of intention to use
Others58✓

【EUIPO-13】Dariusz Tiger Michalczewski,
1. Title

Foodcare v Dariusz Michalczewski

2. Country

European Union

3. Court

Court of Justice

4. Case No.

C-639/16 P (ECLI:EU:C:2017:367)

5. Date of the order

2017/5/11

6. Parties :Plaintiff

Dariusz Michalczewski

Defendant

Foodcare sp. z o.o.

7. Mark

Plaintiff

v

T.G.R. ENERGY DRINKDefendant (Contested trademark)Dariusz Tiger Michalczewski

T.G.R. ENERGY DRINK

8. Outline of the caseDariusz Michalczewski (the Plaintiff) is a well-known boxer also known as ‘Tiger’. He is the proprietor of several
trade marks. In 2003, there was an agreement between him and Foodcare (the Defendant) whereby he authorised thecompany to use the image, nickname ‘Tiger’ as well as the trade marks he owned, in order to promote energy drinks.
Following this agreement, the Defendant filed in 2007an application to register the contested trade mark.

9. Summary of the judgment
The Defendant registered the trade mark ‘T.G.R ENERGY DRINK’. Following this registration, the Plaintiff filed an
application for cancellation of the contested trade mark relying on the Defendant’s bad faith.
The Cancellation Division considered that bad faith had not been proved, because the level of similarity between thesigns is so low that it is hard to see how the Defendant might have thought that the use of the contested trade markcould have caused harm to the former boxer.
The Board of Appeal considered however that the Cancellation Division did not take into account all the relevant
factors when assessing the Defendant’s bad faith at the time of filing of the registration. Based on the assessment of all
the relevant factors, bad faith was established.

The Defendant filed an action before the General Court, requesting the annulment of the Board of Appeal’s decision,
based on Article 52(1)(b) EUTMR.

The General Court (Case T-456/15; Judgment of 5 October 2016, ECLI:EU:T:2016:597) confirmed the existence ofbad faith, since the Board of Appeal did not err in taking into account as relevant factors to assess bad faith: (i) the59existence of direct contractual relations between the parties before the application to register the contested mark was
filed and their content; (ii) the Defendant’s intention to develop its commercial activity relying, in particular, on theimage projected by the Plaintiff and his reputation, this being supported by the content of the contracts and the get-upof the packaging of the products marketed by the Defendant; (iii) the Defendant’s intention to create at least an
association between the sign ‘Tiger Energy Drink’ used on account of the parties’ agreements, which enjoyed aconsiderable reputation, and the contested mark, this being supported by the strong similarity between the signs; (iv)the Defendant’s intention to continue benefiting from the extent of the reputation enjoyed by the sign ‘Tiger Energy
Drink’, while circumventing the contractual obligations arising from the agreements concluded with the Plaintiff, as
supported by the content of the contracts.

The Defendant appealed the judgement in front of the Court of Justice. Yet, the Court of Justice found the appeal inpart manifestly unfounded and in part manifestly inadmissible.

10. Tags① Type of trial② Decision③ Type of bad faithFree Ride
Imitation by agents or people who have a prior relationship
Interference by a competing company
Lack of intention to use
Others60✓

v【EUIPO-14】
1. Title

Airhole Facemasks v

2. Country

European Union

3. Court

General Court

4. Case No.

T-107/16 (ECLI:EU:T:2017:335)

5. Date of the judgment

2017/5/16

6. Parties :Plaintiff

Airhole Facemasks, Inc.

Defendant

sindustrysurf, SL

7. Marksindustrysurf, SL

Plaintiff (owner of an earlier US andDefendant (Disputed trademark)CDN mark)

8. Outline of the case
The Defendant, a previous distributor of the Plaintiff’s goods in six member states of the European Union, registeredon its own name as an EUTM a sign identical to the earlier (US and CDN) Plaintiff’s marks.
It is undisputed that the Plaintiff had consented to the filing of the disputed EUTM, but the parties disagree on whether
such consent extended to the filing of the contested mark in the Defendant’s own name.

9. Summary of the judgment
The Plaintiff requested the disputed EUTM to be declared invalid because it had been applied for in bad faith.
The Cancellation Division found bad faith and declared the disputed mark invalid.
The Board of Appeal annulled the decision of the Cancellation Division. It found that the Plaintiff had not proved thatit had not consented to the filing of the disputed mark in the name of the Defendant, which excluded bad faith.
The General Court annulled the decision of the Board of Appeal and found that the EUTM proprietor (Defendant) had
acted in bad faith when it filed the contested mark.
The General Court found that there was no indication suggesting that the Plaintiff had consented in a clear, specificand unconditional manner to that filing in the Defendant’s own name. This followed from (i) the correspondence
between the parties before and after the filing and (ii) from the objective circumstances of the case such as the identityof the EUTM with the prior US and Canadian marks, the existence of an exclusive distribution agreement, which was
in force at the time of filing and obliged the EUTM proprietor to request an express consent for the use of thePlaintiff’s logos and marks. According to the General Court, this allowed the EUTM proprietor to understand that the61

filing of the contested mark followed the Plaintiff’s commercial logic to extend the protection of its mark to theterritory of the European Union.
The General Court also found that the EUTM proprietor had sought to usurp the Plaintiff’s rights.

As a matter offact, the Defendant neither informed the Plaintiff of the filing and the subsequent registration of the contested mark,nor did it honour its obligation to transfer the contested mark to the Plaintiff, but threatened the very Plaintiff and its
other distributors in the EU with infringement proceedings based on the contested mark.

10. Tags① Type of trial② Decision③ Type of bad faithFree Ride
Imitation by agents or people who have a prior relationship
Interference by a competing company
Lack of intention to use
Others62✓

v【EUIPO-15】
1. Title

Flatworld Solutions v Outsource Professional Services Ltd

2. Country

European Union

3. Court

General Court

4. Case No.

T-340/16 (ECLI:EU:T:2018:314)

5. Date of the judgment

2018/5/31

6. Parties :Plaintiff

Flatworld Solutions Pvt Ltd,Defendant

Outsource Professional Services Ltd

7. Mark

Plaintiff (EUTM)

Defendant (Disputed trademark)8. Outline of the case
Bad faith was assessed inter alia on the basis of the previous commercial relations that existed between the twoparties.

9. Summary of the judgment
The EUTM proprietor (the Defendant) registered the EUTM above in 2008. In 2010, the Plaintiff registered its
trade mark in the EU. Subsequently, the Plaintiff filed an application for a declaration of invalidity of the disputed
trademark, pursuant to Article 52(1)(b) EUTMR.
The Cancellation Division considered that the Defendant had intentionally sought to appropriate the Plaintiff’s trade
mark and thus acted in bad faith at the time of the registration.
Following the Defendant’s appeal, the Board of Appeal considered that the Defendant had not acted in bad faith orwith dishonest intent.
The Plaintiff appealed to the General Court, alleging infringement of Article 52(1)(b) EUTMR.
The General Court annulled the Board of Appeal decision; it considered that the Defendant had acted in bad faithwhen it filed its trade mark application. Indeed, the Defendant knew that the Plaintiff was using that wording in its
logo, in its non-registered mark and in its domain names. In particular, the Defendant contacted the Plaintiff
specifically in order to establish collaboration in the European Union and, more specifically, in Germany, indeveloping the Plaintiff’s business by making use of that wording. In addition, the Defendant filed, shortly after thetermination of its pre-contractual relationship with the Plaintiff, the application for registration of the disputed mark.
All of those factors demonstrate its bad faith, particularly as it had also registered its company and its mark inGermany and the United Kingdom beforehand.

63

10. Tags① Type of trial② Decision③ Type of bad faithFree Ride
Imitation by agents or people who have a prior relationship
Interference by a competing company
Lack of intention to use
Others64✓

Case Examples of JPO

65

【JPO-1】KUMA v. PUMA
1. Title

KUMA v. PUMA

2. CountryJapan

3. Court

Intellectual Property High Court

4. Case No.

2012(Gyo-Ke)10454

5. Date of the judgment

2013/6/27

6. Parties : Plaintiff

Hokkaido Design Kabushiki Kaisha

Defendant
7. Mark

Puma SE
Plaintiff (disputed trademark)Defendant

8. Outline of the caseA case in which the plaintiff’s registered trademark is determined as having been obtained contrary to ethics ofbusiness and being liable to cause confusion with goods connected with another person’s business.
9. Summary of the judgment
The defendant’s trademark had become a well-known, famous trademark widely recognized by traders andconsumers in Japan as a trademark affixed to the defendant’s sports shoes, clothing, bags, etc. The defendant’s
trademark may be recognized to have maintained such recognition as of the time of examination for registrationof the trademark and thereafter.
The defendant is a famous multinational company engaged in the global manufacturing and sale of sports shoes,
clothing, bags, etc., that the defendant’s trademark has been widely recognized among traders and consumers as
a distinctive trademark that indicates the goods pertaining to the business of the defendant, that some of thedesignated goods of the plaintiff’s trademark overlap with the goods for which the defendant’s trademark has
been used.
Based on a comprehensive evaluation of these facts, it may be recognized that the applicant, which was awarethat the defendant’s trademark is famous, created the plaintiff’s trademark consisting of four alphabetic
characters “KUMA” intentionally written in almost the same manner as the defendant’s trademark and a figureof a bear as a replacement of the puma used for the defendant’s trademark in order to ensure that the overall
configuration of the plaintiff’s trademark looks extremely similar to that of the defendant’s trademark so that
traders and consumers who come across the plaintiff’s trademark would associate the Trademark with thedefendant’s Trademark. The applicant created the Trademark, filed an application for registration of the66

trademark, and had it registered for the illicit purpose of free-riding the reputation, honor, and customer appeal
embodied by the defendant’s trademark.
10. Tags① Type of trial

Suit against decision of trial for invalidation② Decision

Invalidation③ Type of bad faithFree Ride✓

Imitation by agents or people who have a prior relationship
Interference by a competing company
Lack of intention to use
Others67

【JPO-2】ASRock v. Asrock
1. Title

ASRock v. Asrock

2. CountryJapan

3. Court

Intellectual Property High Court

4. Case No.

2009(Gyo-Ke)10297

5. Date of the judgment

2010/8/19

6. Parties : Plaintiff

Kabushiki Kaisha Unister

Defendant
7. MarkY
Plaintiff

Defendant (disputed trademark)8. Outline of the caseA case in which the defendant’s trademark to be a filing for the purpose of plagiarism is considered to have fallen
under a trademark which is likely to cause damage to public policy.
9. Summary of the judgment
The application for registration of the defendant trademark was concluded to be filed for the purpose of gaining
unfair profit from assignment of trademark right or causing damages to ASRock Inc. and its dealers for the reasons
that(i) It cannot be considered, or at least the possibility is extremely low, that the defendant has an intention to engage
in business in Japan in the near future in relation to the designated goods pertaining to the Trademark.
(ii) The defendant, although not substantially engaged in any business activities, has filed a large number of
trademark applications relating to electronic equipment. Some of these applications are considered to be theintentional applications of the trademarks identical with, or similar to, the trademarks to be used by othercompanies in foreign countries.
(iii) After the registration of the defendant’s trademark, the defendant, although not doing business in Japan, sent alarge number of warning letters to distributors of ASRock products bearing the plaintiff’s trademark, including theplaintiff, requesting them to cease import and sale of the products and warning them that it may institute a criminal
prosecution or an action seeking claim for damages unless they follow the request.
As mentioned above, the court finds the defendant's trademark to be a filing for the purpose of plagiarism, with an
unfair intention of registering the trademarks to be potentially used and filed for trademark registration in Japan by
ASRock, Inc. as their respective trademarks. Even under the Japanese legal framework which adopts thefirst-to-file system for the trademark registration application without a requirement of actual use at the time offiling, such applications are unacceptable from the standpoint of the rule of reason, considering the commonsense
understanding of the general public when seeking justice. In addition, such applications are considered as being
68detrimental to the fairness in trademark order. Accordingly, the defendant’s trademark is considered to have fallen
under a trademark which is 'likely to cause damage to public policy,' without regard to whether the plaintiff’s
trademark and the mark 'ASRock' were well-known or famous, at the time of the filing thereof.
10. Tags① Type of trial

Suit against decision of trial for invalidation② Decision

Invalidation③ Type of bad faithFree Ride✓

Imitation by agents or people who have a prior relationship
Interference by a competing company
Lack of intention to use✓

Others69

【JPO-3】COMEX v. comex
1. Title

COMEX v. comex

2. CountryJapan

3. Court

Tokyo High Court

4. Case No.

2004(Gyo-Ke)219

5. Date of the judgment

2005/1/31

6. Parties : Plaintiff

Kentrading Brain Kabushiki Kaisha

Defendant

ROLEX societe anonyme
COMEX societe anonyme

7. Mark

Plaintiff (disputed trademark)Defendant

comex
COMEX
8. Outline of the caseA case in which the plaintiff’s trademark to be a filing for the purpose of plagiarism is considered to have fallen
under a trademark which is likely to cause damage to public order or morals.
9. Summary of the judgment
The trademark “COMEX” filed by the plaintiff, when considering the background of filing the application andactivities of the plaintiff after registration of the trademark, was made ahead seeking for benefit by taking theopportunity that the “COMEX” has not been registered in Japan designating goods of ‘watches, parts andaccessories of watches’ in Japan, knowing the popularity of the “ROLEX/comex double named” watch made by
ROLEX company, i.e., the defendant, and proof of high performance and confidence of the ROLEX diver’s
watches being embodied in the trademarks of “comex” and “COMEX”, and thus it is clear, if the trademark“COMEX” is used for watches sold by the plaintiff, such a use will cause misleading of consumers as well as
causing damages of the reputation embodied in the trademarks of “comex” and “COMEX” of ROLEX company
through such a free riding activity, and further, if the trademark “COMEX” is used for relatively inexpensive
diver’s watches sold by the plaintiff, such a use will cause dilution of the trademarks of “comex” and “COMEX”
of which rarity and fame are maintained by the use only by very few Submariner and Sea-Dweller.
In the light of the above described circumstances, continued registration of the trademark “COMEX” shall becontrary to the order scheduled in the Trademark Act. From such an aspect, the trademark “COMEX” must be
invalidated for the reason “the trademark is likely to cause damage to public policy”.
10. Tags
Suit against decision of trial for invalidation① Type of trial
70

Invalidation② Decision③ Type of bad faithFree Ride✓

Imitation by agents or people who have a prior relationship
Interference by a competing company
Lack of intention to use
Others71

【JPO-4】LAMBORGHINI v. Lambormini
1. Title

LAMBORGHINI v. Lambormini

2. CountryJapan

3. Court

Intellectual Property High Court

4. Case No.

2011(Gyo-Ke)10426

5. Date of the judgment

2012/5/31

6. Parties : Plaintiff

Automobili Lamborghini S.p.A

Defendant
7. Mark

Kabushiki Kaisha Liberty Walk
Plaintiff

Defendant (disputed trademark)8. Outline of the caseA case in which the defendant’s trademark is determined as being obtained the purpose of gaining unfair profit,
causing damage to another person, or other unfair purposes because the defendant filed the defendant’s
trademark while knowing that the plaintiff’s trademark is well known among consumers, and also knowing thatthe defendant’s trademark is similar to the plaintiff’s trademark.
9. Summary of the judgment
The plaintiff is a car maker established in Italy in 1962. It is famous on a global level mainly for the high-end
sports cars that it makes and sells. In Japan as well, the cars made by the plaintiff, such as “Countach,” werecalled “supercars” and became popular in the 1970s. The plai-ntiff’s trademark, “LAMBORGHINI,” which
represents part of the plaintiff’s name, has been regarded as an indication of the plaintiff or the goods pertaining
to the plaintiff’s business and well known among car dealers and fans in Japan.
Comparing the plaintiff’s trademark and the defendant’s trademark, nine out of the ten alphabetical characters
forming the character part of the defendant’s trademark are also used in the plaintiff’s trademark. These
trademarks are also similar in terms of sound because their sounds are different for only one sound element andthe different sound elements between them are in the same vowel structure and therefore close to each other. In
appearance, these trademarks are similar in whole, although they have a slight difference. Taking these matters
into consideration as well as the actual conditions of trading including how the plaintiff and the defendant haveused their trademarks, the plaintiff’s trademark and the defendant’s trademark are similar to each other.
It is found that the defendant filed the application for registration of the defendant’s trademark with respect tocars, etc. as the designated goods, while knowing that the plaintiff is a globally famous car maker and the72plaintiff’s trademark is well known among consumers as indicating the goods pertaining to the plaintiff’s
business, and also knowing that the defendant’s trademark is similar to the plaintiff’s trademark, and thedefendant has actually been making and selling custom buggies that resemble the cars made and sold by theplaintiff, while using trademarks such as “Lambormini”. Thus, it is found that the defendant uses the defendant’s
trademark for the purpose of gaining unfair profit, causing damage to the other person, or other unfair purposes.
10. Tags① Type of trial

Suit against decision of trial for invalidation② Decision

Invalidation③ Type of bad faithFree Ride✓

Imitation by agents or people who have a prior relationship
Interference by a competing company
Lack of intention to use
Others73

【JPO-5】Manhattan passage v. ManhattanPortage
1. Title

Manhattan passage v. ManhattanPortage

2. CountryJapan

3. Court

Tokyo High Court the 18th civil chamber

4. Case No.

2002(Gyo-Ke)593

5. Date of the judgment

2003/11/20

6. Parties : Plaintiff

Leisure Products Kabushiki Kaisha

Defendant
7. Mark

Manhattan Portage Ltd.
Plaintiff (disputed trademark)(‘ManhattanPortage’(figure trademark in

combined trademark

other case)

Defendant (cited mark)in other case)

8. Outline of the caseA case in which the plaintiff’s trademark is determined as being filed for the unfair purposes such as to preventthe foreign well-known trademark proprietors from entering into Japan, have them buy out expensively or sign adomestic agency contract.
9. Summary of the judgment
The plaintiff’s trademark is constituted as illustrated upper left (see “disputed trademark”), has registered as thetrademark designating goods including ‘leather, skin, tanned leather, etc.’
The cited mark is constituted as illustrated upper right (see “cited mark”) and the defendant designed and used itfor ‘messenger bags, softly-made hand bags, backpacks, etc.’ (hereinafter referred to as ‘the defendant’s goods’).
The ‘ManhattanPortage’ combined trademark and the figure trademark in other cases are constituted as
illustrated upper left. Their rights belong to ‘A’ who was the Representative Director of the plaintiff.
The defendant started using its marks in the U.S. in April 1983 and obtained the U.S. trademark registrations inJuly 1997. The cited mark has been widely known at least in the field where bags are handled and among
consumers of the goods in the U.S. before the application for registration of the plaintiff’s trademark was filed.
The defendant and ‘A’ negotiated about transactions of the defendant’s goods. They basically agreed that A
74

would purchase the defendant’s goods. However, ‘A’ (or the plaintiff) and the defendant did not reach definitive
agreement as to exclusive distributorship of the defendant’s goods in Japan.
Further, it is presumed that ‘A’ sufficiently recognized the reputation of the defendant’s goods, and the plaintiff
had not notified the relevant parties of the defendant about the plaintiff’s application for registration of
trademark combined with Portage in other case and the device mark in other case, and furthermore the plaintiff’s
trademark.
There was an unfair purpose in the behavior that ‘A’ filed the application for registration of the‘ManhattanPortage’ combined trademark and the figure trademark in other case, since ‘A’ filed the application
for registration of the plaintiff’s trademark similar in appearance (also in sound for the application forregistration of trademark combined with Portage in other case) in Japan, understanding that ‘A’ had no license to
use these marks that had been well known in the U.S.
Further, when considering that the plaintiff’s trademark closely resembles the ‘ManhattanPortage’ combined
trademark and the figure trademark in other case, it should be concluded that there was an unfair purpose in
filing the application for registration of the plaintiff’s trademark as well as in filing the applications forregistrations of the above mentioned two other trademarks.
Consequently, it shall be concluded that there is no error in the decision stating that filing of the application forregistration of the plaintiff’s trademark was made for the unfair purpose.
10. Tags① Type of trial

Suit against decision of trial for invalidation② Decision

Invalidation③ Type of bad faithFree Ride✓

Imitation by agents or people who have a prior relationship
Interference by a competing company
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Others✓75

【JPO-6】L’AIR DU TEMPS v. レールデュタン
1. Title

L’AIR DU TEMPS v. レールデュタン

2. CountryJapan

3. Court

the 3rd petty bench of the Supreme Court

4. Case No.

1998(Gyo-Hi)85

5. Date of the judgment

2000/7/11

6. Parties : Appellant

SARL parfum Nina Ricci

Appellee
7. Mark

madras Inc.
AppelleeAppellant (disputed trademark)(registered trademark)(used trademarks)

レールデュタン

レール・デュ・タン
(used trademarks)
L'Air du Temps
8. Outline of the case
Judgment upon case concerning the effect that ‘trademarks which are likely to cause confusion with goods orservices connected with another person’s business’ as referred to in Article 4 (1) (xv) of the Trademark Act
include trademarks that risk causing confusion in the broad sense of the term
9. Summary of the judgment(1) It is legitimate to assume that ‘trademarks which are likely to cause confusion with goods or services
connected with another person’s business’ as referred to in Article 4 (1) (xv) of the Trademark Act, when the
trademark is used for its designated goods or services, not only trademarks which are likely to cause
misunderstanding that the goods, etc. are connected with another person’s goods or services, but also trademarks
which are likely to cause such misunderstanding that the goods, etc. are connected with business of a proprietor
having a close business relationship with the above mentioned another person, i.e., the business relationship ofparent company or subsidiary company, or belonging to a group producing goods to which the same indication is
attached (hereinafter, referred to as ‘liable to cause confusion in a broad sense’).
Whether it is ‘likely to cause confusion’ or not is to be determined totally referring to attentiveness to begenerally payed by dealers and consumers of the designated goods, etc. to which the trademark is attached, inlight of the degree of similarity between the trademark and another person’s indication, the degree ofwell-known fame or uniqueness of another person’s indication, the degree of relationship in terms of nature, use,or purpose between the designated goods, etc. of the trademark and goods, etc. connected with another person’sbusiness, and commonality between dealers and consumers in terms of goods, etc. and actual circumstances of76

transaction.
(2)The appellee’s registered trademark is identical at least to the trademark ‘レール・デュ・タン’in sound among
the trademarks in use, also resembles in appearance, and further, in view of the spelling itself and designatedgoods of the appellant’s trademark, sound of “re-e-ru-du-ta-n” in French in terms of the appellee’s trademark.
Therefore, it is concluded that the appellee’s registered trademark is identical to the appellant’s trademark insound. Further, each trademark in use and the appellant’s trademark are unique marks and are famous asindicating one of perfumes of the appellant to consumers who are interested in dealers of perfumes andhigh-grade perfumes.

Still further, among the designated goods of the appellee’s registered trademark,‘cosmetic utensils, ornaments, head accessories, bags, and pouches’ are closely related to the perfume mainly inthe use for decorating woman and thus not a little number of consumers overlap between both goods.
As indicated above, if the appellee’s registered trademark is used for ‘cosmetic utensils, ornaments, head
accessories, bags, and pouches’, such use shall be likely to cause confusion in broad sense among the dealers andconsumers as if the above described goods are those connected with the business of the proprietor having a close
relationship with the appellant as described above.
10. Tags① Type of trial

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Imitation by agents or people who have a prior relationship
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【JPO-7】MARIEFRANCE v. MARIE FRANCE
1. Title

MARIEFRANCE v. MARIE FRANCE

2. CountryJapan

3. Court

JPO trial and appeal department

4. Case No.

Appeal No. 25958 (1995)

5. Date of the judgment

1999/8/11

6. Parties : DemandantZyasu International Kabushiki Kaisha

7. Mark

Demandant (disputed trademark)Cited mark8. Outline of the caseA case in which an application filed was appropriated a well-known trademark in France and applied as the use
for unfair purpose
9. Summary of the judgment
The demandant’s trademark(disputed trademark) is constituted of laterally written alphabet letters of ‘MARIEFRANCE’ and designates goods including ‘clothing made in France, coat made in France’ and the like. And thealphabet letters of ‘MARIE FRANCE’ was well-known and famous as a title of magazine in France as of filingthe application for trademark registration.
Meanwhile, order of letters of the demandant’s trademark is completely identical to that of the title of the Frenchmagazine, i.e., ‘MARIE FRANCE’, and thus the both marks are deemed as identical to each other from common
sense. Because it is deemed impossible that the demandant could independently or coincidentally select andfile the letters arranged in the same order without knowing the ‘MARIE FRANCE’ magazine, it is reasonable toconsider that the demandant used the title of the ‘MARIE FRANCE’ magazine almost as it is appropriated.
The demandant’s trademark designates goods of ‘clothing, coat, sweaters, nightwear, underwear, swim wears forladies’ and the like, the ‘MARIE FRANCE’ magazine runs information, etc., as to ladies’ fashion, and, when
considering that French fashion draws high interest also in Japan. Therefore it is assumed that consumers ofladies’ fashion magazine and consumers of the designated goods of the demandant’s trademark shall overlap
each other to some extent. If so, in a case where the right proprietor of the ‘MARIE FRANCE’ magazine or aperson related to the proprietor attempts to enter into Japanese market, it would be likely to cause confusion of
the indicating source with the demandant’s trademark, which in turn results in preventing them from entering toJapanese market.
When taking the above into consideration, the demandant’s trademark was filed as to be appropriated on almost
the same trademark that is well-known and famous in a foreign country, and thus the application must be filed78

with unfair purpose contrary to the fair and equitable principle.
10. Tags① Type of trial

Appeal against an examiner’s decision of refusal② Decision

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【JPO-8】M.A.C MAKEUP ART COLLECTION v. M.A.C
1. Title

M.A.C MAKEUP ART COLLECTION v. M.A.C

2. CountryJapan

3. Court

Opposition to the Registration (Trial / Appeal at JPO)

4. Case No.

Appeal No. 92239 (1998)

5. Date of the judgment

2000/3/28

6. Parties :Owner of TM Rights

Kabushiki Kaisha Trysail

Opponent

Make-up Art Cosmetics, Inc.

7. Mark

Owner of TM Rights (disputed

Opponent (cited trademark)trademark)8. Outline of the caseA case in which the trial examiners rendered a ruling that the trademark registration concerned in the opposition
would be revoked. In this case, trial examiners admitted that the disputed trademark had been used for unfair
intension, namely intension to prevent the foreign well-known trademark proprietors from entering into Japan, tocause dilution of the trademark and to gain unfair profit, etc.
9. Summary of the judgment
The disputed trademark is constituted of designed “M.A.C” and “MAKEUP ART COLLECTION” that are in
two lines (see “disputed trademark”) and designates goods including “bags, pouches, cosmetics bags, fittings forbags, opening fittings for wallets, horse-riding equipment” and the like. The cited trademark, referred by the
opponent, is constituted of letters of “M.A.C” (see “cited trademark”) and designates goods including“fragrance, cosmetics, tooth paste”.
The cited trademark of the opponent is used as the trademark for “make-up cosmetics”, etc., which has been
worldwide popular products among Canada, America, etc.
The alphabet letters of “MAC” constituting the disputed trademark are perfectly identical to those of the citedtrademark into detail in terms of the decoratively featured design. Further, the letters of “MAKEUP ART
COLLECTION” written in the lower line is liable to cause consumers to recognize as if it has some relationshipwith the make-up cosmetics of the opponent’s business, and the designated goods of the disputed trademark also
includes cosmetic bags where cosmetic bags are also the goods that the opponent sells.
Taking the above into consideration, it is hard to presume that the disputed trademark accidentally coincides withthe cited trademark. It is rather presumed that the owner of the disputed trademark filed the application and80

obtained the registration thereof for the purposes of preventing the foreign proprietor from entering to Japanesemarket, enforcing the foreign proprietor to make an agency agreement in Japan, gaining unfair profit by diluting,or free riding on the consumer attracting power of the cited trademark to gain unfair benefit. Therefore, thedisputed trademark must be considered as the trademark being used for the unfair purposes.
10. Tags① Type of trial

Opposition to the Registration② Decision

Ruling to revoke③ Type of bad faithFree Ride✓

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【JPO-9】SONY v. SONYAN
1. Title

SONY v. SONYAN

2. CountryJapan

3. Court

Tokyo High Court

4. Case No.

1977 (Gyo-Ke) 133

5. Date of the judgment

1978/4/26

6. Parties : Plaintiff

SONY Corporation

Defendant
7. MarkY
Plaintiff (cited mark)Defendant (disputed trademark)SONY
8. Outline of the caseA case in which the disputed trademark which contains therein another person’s famous trademark as a main part
thereof, was constituted to be invalid since it readily remind of and perceives another person’s famousabbreviated name.
9. Summary of the judgment
The disputed trademark is constituted of letters of “SONYAN” (see “disputed trademark) and designates goods
including “woven fabric, knit fabric, and other fabrics including felt”.
Incidentally, an invented word mark constituted of alphabet letters of “SONY” and a mark constituted of
katakana characters of “ ソ ニ ー ” representing sound of “SONY” have been remarkably famous both
domestically and internationally as the trademark for “electrical equipment” such as “transistor radio, television,
tape recorder”, etc. of the business of the plaintiff. In other words, it is admitted that both the “SONY” and “ソニー” have been well-known and famous in the public not only as the trademark for goods produced and sold by
the plaintiff but also as the abbreviated name of the plaintiff at the time when the disputed trademark was filed.
On the other hand, where a series of letters of “SONYAN” of the disputed trademark has no remarkable feature
in font design, the first four letters among all the six letters are coincide with the plaintiff’s invented word
“SONY” and the last two letters “AN” following the first four letters are frequently intuitively recognized as
giving a meaning of “one’s”, “having the nature of”, or “of a race of” in the light of the benchmark of the
English knowledge in Japan.
When taking the above into consideration, the disputed trademark shall easily remind of and perceive the famousabbreviated name of “SONY” and shall highly possibly mislead the public to read the main portion as “SONY”.
Since the disputed trademark shall be considered as a trademark containing another person’s famous abbreviated82name therein, and thus falls under Section 4 (1) (viii) of the Trademark Act, it should be constituted to be invalid.
10. Tags① Type of trial

Suit against decision of trial for invalidation② Decision

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Others83

【JPO-10】RC TAVERN / アールシータバーン v. アールシータバーン
1. Title

RC TAVERN / アールシータバーン v. アールシータバーン

2. CountryJapan

3. Court

Intellectual Property High Court

4. Case No.

2012 (Gyo-ke) 10019

5. Date of the judgment

2012/5/31

6. Parties : Plaintiff

Dynac co.Ltd

Defendant
7. MarkY
Plaintiff (plaintiff’s trademark)Defendant (disputed trademark)8. Outline of the caseA case in which the disputed trademark is not considered as the actually used trademark or the trademark that the
proprietor has the intention to use in the future at the time when the disputed trademark was decided to beregistered
9. Summary of the judgment
The trademark in use by the plaintiff is constituted as illustrated above (see “plaintiff’s trademark”) and thedisputed trademark, which designates services including “serving foods and drinks”, is constituted as illustrated
above (see “disputed trademark”).
When taking account of the fact that disputed trademark has a constitution identical to the plaintiff’s trademark
in use expect for the font design of the letters of”アールシータバーン” and the sound of the disputed

trademark is identical to the plaintiff’s, i.e., sound of “a-a-ru-si-i-ta-ba-a-n”, it is admitted that the disputed
trademark is similar to the plaintiff’s trademark.
In view of the facts that the plaintiff's trademark is a coined phrase created by combining “RC” which is theinitials of the name of the restaurant, “Rose & Crown”, operated by the plaintiff, with “Tavern,” which is an
English word meaning a pub or bar, and it may be considered to be distinctive, and that the timing ofadvertisement and opening of the establishment is close to the date of filing an application for the disputed
trademark, the defendant may be considered to have filed an application for the disputed trademark, which issimilar to the plaintiff's trademark in use, with the awareness of the existence of the plaintiff's trademark in use.
Where the defendant filed 44 applications for registration of trademarks in addition to the disputed trademark ina short period and obtained decisions of registrations thereof, the defendant has not been using any of the84

obtained registered trademarks for designated services or the other business to date, and the designated services
expand in a wide range, has no consistency, and further, with respect to 30 trademarks among the registeredtrademarks not in use, there are shops/restaurants and companies using similar trademarks and marks irrelevantto the defendant, and still further, with respect to at least 10 trademarks among the registered trademarks not inuse, the applications for trademark registration was filed by the defendant after start of the use of the otherpersons’ similar trademarks or marks.
In sum, the defendant filed applications for trademark registration designating various services with respect toanother persons’ trademarks or marks in use only for the purpose of collecting the registered trademarks.
Consequently, the disputed trademark is not considered as being the trademark in use that is used for goods orservices connected with the defendant’s business or the trademark that will be intentionally used for goods orservices connected with the defendant’s business in the future.
It is not admitted that filing of the disputed trademark was made for “any trademark to be used in connection
with goods or services pertaining to the defendant’s business of an applicant”, and thus was registered contrary
to main paragraph of Section 3 (1) of the Trademark Act”.
10. Tags① Type of trial

Suit against decision of trial for invalidation② Decision

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Others85

【JPO-11】Chromax v. Chromax
1. Title

Chromax v. Chromax

2. CountryJapan

3. Court

Intellectual Property High Court

4. Case No.

2011(Gyo-ke)10194

5. Date of the judgment

2012/1/19

6. Parties : Plaintiff

Aiemu Kabushiki Kaisha

Defendant
7. Mark

Xiuwei Co., Ltd.
Plaintiff (disputed trademark)Defendant

Ｃｈｒｏｍａｘ
8. Outline of the case
It is considered that the application for registration of the disputed trademark was, without a just cause, filed by
the plaintiff (importer) without the approval of the defendant (exporter in Taiwan).
9. Summary of the judgment
Because the designated goods “golf balls”, etc., of the disputed trademark are included in the designated goodsof the defendant’s trademark registered in Taiwan, such duplication is likely to cause confusion and mislead as
to the respective origins of goods bearing the disputed trademark and of goods bearing the trademark of the
defendant.
Because a relationship of trust based on actual deeds had developed between the plaintiff and the defendant
through their regular business dealing, the plaintiff clearly played the role of an agent selling the goods of the
defendant in Japan. Therefore, the status of the plaintiff falls into the category of “agent or representative” asdefined in Article 53-2 of the Trademark Act.
In support of just cause as defined in the Trademark Act, the plaintiff only states that the value of the disputed
trademark in Japan was increased by the plaintiff’s advertising, and the substantial expenditure thereby entailed,with a view to increasing the value of the disputed trademark. However, while it is a fact that the plaintiff did
advertise in Japan the golf balls manufactured by the defendant, there is no evidence that the value of the
trademark associated with the golf balls was increased by such advertising and the expenditure entailed thereinor by the scale of them.
On the basis of the above, it is concluded that the application for registration of the disputed trademark was,without a just cause, filed without the approval of the person who has the right pertaining to the trademark.
Thus, the claim of the plaintiff is dismissed.
* Article 53-2 Where a registered trademark is a trademark pertaining to a right to a trademark (limited to a86

right equivalent to a trademark right) held by a person in a country party to the Paris Convention, a memberof the World Trade Organization or a Contracting Party to the Trademark Law Treaty or a trademark similar
thereto, and the designated goods or designated services thereof are goods or services pertaining to those rightor goods or services similar thereto, and further, the application for trademark registration was filed without
the approval of the person who has the right pertaining to the trademark, without a just cause, by their agent
or representative or by their former agent or representative within one year prior to the filing date of the
trademark registration, the person who has the right pertaining to the trademark may file a request for a trial
for rescission of the trademark registration.
10. Tags① Type of trial

Suit against decision of trial for invalidation② Decision

Invalidation③ Type of bad faithFree Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others87✓

【JPO-12】のらや v. のらや
1. Title

のらや v. のらや (Noraya)

2. CountryJapan

3. Court

Intellectual Property High Court

4. Case No.

2015(Gyo-Ke)10022, 10023

5. Date of the judgment

2015/8/03

6. Parties : Plaintiff

Kabushiki Kaisha NORAYA

Defendant
7. MarkY
Plaintiff(formerregisteredtrademarks)

のらや

Defendant (disputed trademarks)

のらや

8. Outline of the caseOn the very day when the plaintiff’s trademark rights, who is the franchiser, expired due to his negligence, thedefendant, who is the franchisee, filed applications to register the plaintiff’s former registered trademarks
without notice to the plaintiff, and the trademarks were registered. Therefore, the plaintiff filed requests for a
trial for rescission of the applications to register the defendant’s trademarks, on the grounds that defendant’s
trademarks are likely to negatively affect public policy. As the requests were unsuccessful, the plaintiff began
litigations requesting revocation of the trial decisions. These requests were granted.
9. Summary of the judgment
At the time of filing the applications in question, the plaintiff and the defendant were, respectively, franchisorand franchisee in a franchise contract relating to a restaurant by the name of “のやら” (Noraya). The contract
imposed on the defendant an obligation under the fair and equitable principle to recognize the plaintiff’s rightin respect of its trademarks, and not to prevent the plaintiff from possessing and managing the right.
The plaintiff had previously owned trademark rights of a trademark consisting of the letters “のらや”andanother consisting of the figure of a cat, but these became extinct through expiration, the plaintiff being
unaware of the need for renewal of a trademark right. On the day of extinction, the defendant, without priornotice to the plaintiff, unilaterally filed applications to register the trademarks and acquired the trademark
rights. Such actions were contrary to the fair and equitable principle because they could have seriously
damaged the plaintiff’s business. The defendant alleges that the purpose of the applications was to prevent athird party from obtaining the trademark rights; however, if that had been the case, the defendant would only88

have had to tell the plaintiff of the need to apply for renewal, yet the defendant did not do so. Furthermore, thedefendant concealed the filing of the trademark applications from the plaintiff.
In addition, the defendant had a monthly obligation to pay for the foodstuffs provided by the plaintiff as wellas to pay royalties. In this regard, the defendant, having been in ongoing negotiations with the plaintiff
concerning the performance of the contract since immediately prior to the filing of the applications, used theapplications as a means to gain a negotiating advantage.
Taking all of the above circumstances into account, it can be amply deemed that the defendant’s purpose insubmitting the applications was not to prevent a third party from registering the plaintiff’s trademarks, but toprofit unfairly by using the applications, or the fact that the trademarks would be registered by means of it, togain a monetary advantage in negotiations with the plaintiff.
Therefore, in light of the purpose and circumstances of the applications in question, the trademarks fall under
the category of “a trademark which is likely to negatively affect public policy” as set forth in item 7,paragraph 1, Article 4, of the Trademark Act. Consequently, the trial decisions should be revoked as being
untenable.
* Article 4(1)Notwithstanding the preceding Article, no trademark may be registered if the trademark:(vii) is likely to negatively affect public policy.
Examination guidelines for Trademarks (relating to Article 4(1)(vii))
1. Trademarks that are "likely to cause damage to public order or morality" are, for example, the trademarksthat fall under the cases prescribed in (1) to (5) below.
((1) to (4) are not applicable in this case)(5) Trademarks whose registration is contrary to the order predetermined under the Trademark Act and isutterly unacceptable for lack of social reasonableness in the background to the filing of an application for
trademark registration.
10. Tags① Type of trial

Suit against decision of trial for invalidation②Decision

Invalidation③Type of bad faithFree Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
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Others89✓

【JPO-13】Tarzan（ターザン）v. Tarzan
1. Title

Tarzan（ターザン）v. Tarzan

2. CountryJapan

3. Court

Intellectual Property High Court

4. Case No.

2011(Gyo-ke)10400

5. Date of the judgment

2012/6/27

6. Parties : Plaintiff

Edgar Rice Burroughs Inc.

Defendant
7. Mark

Kabushiki Kaisha Starseiki
Plaintiff

Defendant (disputed trademark)ＴａｒｚａｎＴａｒｚａｎ（ターザン）
8. Outline of the case
The plaintiff requested a trial for invalidation of the registration of the defendant’s trademark on the grounds thatthe trademark is likely to negatively affect public policy. The trial decision being not to invalidate theregistration, the plaintiff filed suit against decision of trial for invalidation. The request was granted.
9. Summary of the judgment
The disputed trademark, “Tarzan”, is the name of the hero of the Tarzan series of novels by the late American
writer Edgar Rice Burroughs. The designated goods of the trademark are plastic processing machines andapparatus and others.
The trial decision is correct in that even though contemporary Japanese consumers associate the word “Tarzan”
with a heroic jungle adventurer, there is no evidence that the word was widely known as the title of certain works
by Edgar Rice Burroughs, or as the name of the principal character in those works, or as constituting any of themarks managed by the appellant (plaintiff) at the time the examiner decided to register the trademark.
The defendant was inspired to use the word “Tarzan” by a movement executed by an industrial robot
manufactured by the defendant for the removal of molded resin products, and registered the disputed trademark
with the intention of using the name “Tarzan” as the product name of the robot. However, we cannot think thatsuch action of the defendant is taking a free ride on the image of "Tarzan" character and its power to attract
customers.
Although not widely known in Japan, through novels and other works of fiction, the name “Tarzan”, which is aunique coined word, is consistently recognized overseas, mainly in the United States, as the name of a fictional
character evoking a particular impression. Thus, because no other impressions are evoked by the word “Tarzan”,
and even though the word lacks the power to attract customers to the designated goods, maintaining registrationin Japan of the trademark consisting solely of the word “Tarzan” will be contrary to the international faith.

90

At the time of the examiner’s decision to register the defendant’s trademark (July 6, 2010), the novels of Edgar
Rice Burrows and their derivative works were still in copyright in Japan. The plaintiff acquired the rights to the
Tarzan series from the estate of Edgar Rice Burroughs and has endeavored to maintain the value of the original
Tarzan novel and its derivative works; for example, the plaintiff has promoted the various Tarzan works,
featuring them on the plaintiff’s website, and has established an online archive containing the novels and otherworks of Edgar Rice Burroughs, including the Tarzan series. The plaintiff has also endeavored to maintain andmanage the commercial value of the name “Tarzan” by registering trademarks globally and by licensing the useof those trademarks.
Where an original novel, for which a mark and a character having an enduring value appears, is in copyright, andwhere there exists an organization, such as the plaintiff, that has strived to maintain and manage the cultural andeconomic value of the mark and character, it is unreasonable in terms of fair business practice that a third party,
in being the first to file an application to register the trademark for specific designated goods or services, may
exclude the plaintiff, as a copyright managing corporation, from using its own trademarks, since the third party
would be able to maintain its trademark right virtually indefinitely by renewal of the trademark registration.
Because the defendant has demonstrated no concern about maintaining the cultural and commercial value of theword “Tarzan”, it is not reasonable to approve the defendant’s exclusive use of the word “Tarzan” even though
the disputed trademark would be used only for the defendant’s designated goods; therefore registration of the
disputed trademark may be considered an unfair business practice and thus negatively affects public policy.
Taking all of the above points into account, it is concluded that the disputed trademark falls into the category of a
trademark likely to negatively affect public policy.

* Article 4(1)Notwithstanding the preceding Article, no trademark may be registered if the trademark:(vii) is likely to negatively affect public policy.
Examination Guidelines for Trademarks (relating to Article 4(1)(vii))
Article 4(1) (vii) (Contravention of public order or morality)(vii) A trademark being likely to cause damage to public order or morality;
According to the Examination Guidelines for Trademarks, a trademark being likely to cause damage to publicorder or morality shall include those which are not unethical etc. in composition per se but which fall into thecategory as listed below.
・ Trademarks which are liable to conflict with the public interests of the society or contravene thegenerally-accepted sense of morality if used for the designated goods or designated services.
・Trademarks liable to dishonor a specific country or its people or trademarks generally considered contrary to
the international faith.
10. Tags② Type of trial

Suit against decision of trial for invalidation②Decision

Invalidation③Type of bad faithFree Ride✓

Imitation by agents or people who have a prior relationship91Interference by a competing company
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Others92

【JPO-14】v.

1. Titlev.
2. CountryJapan

3. Court

Intellectual Property High Court

4. Case No.

2009(Gyo-ke)10274

5. Date of the judgment

2010/1/13

6. Parties : Plaintiff

Yugen Kaisha Uprise Product

Defendant
7. MarkCommissioner of the Japan Patent Office
Plaintiff (disputed trademark)Defendant (cited trademark)8. Outline of the caseThis case involves an opposition filed against the disputed trademark on the grounds of likelihood of confusion
in connection with the goods or services pertaining to a business of another person. The plaintiff (Acid Black
Cherry) appealed to the Intellectual Property High Court and, as a result, the trademark registration wasmaintained.
9. Summary of the judgment
It is confirmed that the owner of the disputed trademark is the management company of the band “Acid Black
Cherry”.
The cited trademark, however, belongs to the prominent rock band the Rolling Stones, which has been active forover 40 years since their 1963 debut album release. The cited trademark first appeared on the jacket of the 1971
record album “Sticky Fingers”; and later appeared in connection with various digital music platforms and onCDs, as well as on concert advertisements and posters in Japan. Therefore, by the time the trademark application
was filed, the cited trademark had been already widely recognized among music suppliers and consumers as the
Rolling Stones’ trademark in connection with related goods and services. The cited trademark was still an issue
at the time of trademark registration as well.
Also, it has to be taken into account that the cited trademark is innovative figure and demonstrates a high degreeof originality.
However, both the disputed and cited trademarks differ not only in sound and concept but especially in93appearance. That is, the front side of the disputed trademark is a plane figure, with three black images drawn on
the tongue, whereas the cited trademark is a plane figure which looks like a solid positioned slightly diagonally,
with no images drawn on the tongue. Furthermore, the cited trademark is well known among music suppliers andconsumers, and thus the difference between marks becomes more obvious for the music suppliers andconsumers.
Moreover, due to a wide variety of choices in the music industry, it is common for consumers to checkassociated information carefully before purchasing CDs, attending concerts, etc. Since suppliers who related tothe music industry are usually knowledgeable about music, it is highly doubtful that they would confuse thedesignated goods and services of the disputed trademark with those of the Rolling Stones’ trademark.
Taking such considerations into account, the use of the disputed trademark, at the time of application filing andthe registration process, did not cause confusion in connection with the goods and services pertaining to abusiness of the Rolling Stones, the person who has close business relationship with the Rolling Stones or belongs
to its affiliated companies.
It follows from the above that the disputed trademark does not fall into the category which is likely to cause
confusion in connection with the goods and services pertaining to a business of another person.

* Article 4(1)Notwithstanding the preceding Article, no trademark may be registered if the trademark:(xv)is likely to cause confusion in connection with the goods or services pertaining to abusiness of another person (except those listed in items (x) through (xiv) inclusive);
10. Tags① Type of trial

Suit against decision of trial for invalidation② Decision

Invalidation③ Type of bad faithFree Ride✓

Imitation by agents or people who have a prior relationship
Interference by a competing company
Lack of intention to use
Others94

【JPO-15】v.

1. Titlev.
2. CountryJapan

3. Court

Intellectual Property High Court

4. Case No.

2017(Gyo-ke)10080

5. Date of the judgment

2017/12/25

6. Parties : Plaintiff

Red Bull Aktiengesellschaft

Defendant
7. Mark

Bruson Co., Ltd.
Plaintiff (cited trademark = trademark
in Use 2 (above), trademark in Use
1(below))

Defendant (disputed trademark)8. Outline of the caseIn the trial for invalidation, it was decided that the disputed trademark does not fall into the category which islikely to cause confusion in connection with the goods or services pertaining to a business of another person, andso the plaintiff filed suit against decision of trial for invalidation. The request was granted.
9. Summary of the judgment
Company Red Bull (which is the inclusive name of Red Bull GmbH (headquarters), Red Bull Japan (thesubsidiary in Japan) and those affiliated companies) uses the trademark in use 1 (herein after called ‘trademark1’) etc. both on the surface of canned energy drink ‘Red Bull’ and for its advertisement; the design of the surface
has not changed from the start of its sales until now. When looking at the overall structural outline, the basic
composition of the defendant’s trademark and the cited trademark is almost similar and partially identical, soboth trademarks are confusingly similar in their appearance. Also, they share almost identical concept, therefore,
it can be confirmed that both trademarks share relatively high similarities.
At the time of filing the application to register the defendant’s trademark, the number of sales of ‘Red Bull’amounted to 176 million cans within the previous 8 years, occupying approximately 60% of the market share in
Japan. Products identified by the trademark 1 can be found in various media, sports, and events, etc. and is used
for products of many companies under the License Agreement with Company Red Bull relating to the trademark
1. The advertising expenditure totaled 7,960 million yen in 2013 alone.
Company Red Bull became an F1 race sponsor for the first time in 1995, and the company’s racing team also
won the F1 Suzuka Grand Prix. Both the trademark 1 and 2(=cited trademark) can be seen on the racing cars and95the drivers’ sportswears, etc as well as on products for sale relating to race of car and motorcycle.
It follows from the above that at the time of filing the application to register the defendant’s trademark, thetrademark 1 was already widely recognized among the suppliers and consumers in Japan as an item associatedwith Company Red Bull products; such recognition has not changed up to today.
Furthermore, the cited trademark (= trademark in use 2) not only constitutes of the trademark 1 as an element
thereof but also is an independently used mark very often, therefore it can be confirmed that the cited trademark
is also widely recognized among suppliers and consumers not only of products of Red Bull energy drinks but
also of products related to the automobile industry, both during the filing of the application to register the
defendant’s trademark and the registration process. Such status of the cited trademark has not changed.
The cited trademark is used for products related to automobiles and car races, whereas the designated goods ofthe defendant’s trademark are related to the automobile supplies. Therefore, the designated goods of the
defendant’s trademark are related to the products which are well known for the cited trademark.
Since main consumers of the products bearing the defendant’s trademark do not always check the trademark
carefully when making a purchase, they may not notice small differences between the cited trademark (=trademark 2) and the defendant’s trademark.
Taking such considerations into account, suppliers and consumers are likely to confuse the products of the
defendant’s trademark with those of Company Red Bull or any other affiliated company.
It follows from the above that the defendant’s trademark falls into the category which is likely to cause
confusion in connection with the goods or services pertaining to a business of another person. Therefore, the trial
decision was incorrect.

* Article 4(1)Notwithstanding the preceding Article, no trademark may be registered if the trademark:(xv)is likely to cause confusion in connection with the goods or services pertaining to abusiness of another person (except those listed in items (x) through (xiv) inclusive);
10. Tags①Type of trial

Suit against decision of trial for invalidation②Decision

Invalidation③Type of bad faithFree Ride✓

Imitation by agents or people who have a prior relationship
Interference by a competing company
Lack of intention to use
Others96

Case Examples of KIPO

97

【KIPO-1】ALPINESTARS v. ALPENSTER
1. Title

ALPINESTARS v. ALPENSTER

2. Country

Korea

3. Court

Patent Court

4. Case No.

Patent Court 2012 (Heo) 2364

5. Date of the judgment

2012/6/8

6. Parties : Plaintiff

Alpinestars Research SRL

Defendant
7. Mark

Kolon Industries, Inc
Plaintiff

Defendant (disputed trademark)8. Outline of the caseA case in which the court ruled that the trademark, which was filed by the Defendant's recognizing the existenceof the Plaintiff trademark, was using for "unfair intention".
9. Summary of the judgment
The plaintiff has manufactured boots for motocross (A cross-country motorcycle race) and road racing since it
was established as hiking and skiing boots manufacturer at the end of 1962 in Italy. The plaintiff has
manufactured all kinds of technical protective gear for motorcycling including gloves, jacket and leather suitsince 1990. Since then the plaintiff has diversified into action sports clothing and casual clothing. B) The
plaintiff named the trademark ‘ALPINESTARS’, flower translated ‘Stella Alpina’(A star of Alps) in alpine
region near the manufacturer into English, and has put the trademark on the product as prior use trademark.
Determination of ‘unjust purpose’ should be judged by taking into account whether the goods of certain person iswell known to, famous and creative, how similar or identical are the certain person’s trademark and registeredone, whether the negotiation is done or what’s contained between applicant and certain person, other relationshipbetween two parties, whether the applicant prepared detailed project plan, identity or similarity of the productand closer economic relation and business status under Article 7(1)(ⅻ) of Trademark Act.(See 2010 Hu 807
decision sentenced on July 15 in 2010 by Supreme Court)
Given that whether the prior use trademark on ‘motorcycle boots and action sports clothing’ were notably
recognized in Italy on June 16 in 2008, the application date of the registered trademark, beyond recognition that
consumers indicate them as goods of certain person, the registered trademark is similar to prior use trademark,whether ‘motorcycle athlete’s boots, sports shoes, clothing only for sports, socks and necktie, class of goods ofthe registered trademark are identical or similar to ‘motorcycle boots and action sports clothing’, goods withprior use trademark, and whether there is closer economic relation between them and the defendant was aware of
the existence of prior use product as large scale action sports clothing manufacturer, it is judged that defendant
intended to make unfair profit based on high quality image and attraction to customers of prior use trademark bycopying prior use trademark, well known trademark, and filed an application and registered the trademark
98aiming at damaging the plaintiff, user of the prior use trademark..
10. Tags
Suit for cancellation of the registration of a

① Type of trial

trademarkCancellation② Decision③ Type of bad faithFree Ride✓

Imitation by agents or people who have a prior relationship
Interference by a competing company
Lack of intention to use
Others99

【KIPO-2】なかったコトに！ v. なかった コトに
1. Title

なかったコトに！ v. なかった コトに (Naghata gotoni)

2. Country

Korea

3. Court

Patent Court

4. Case No.

Patent Court 2015 (Heo) 185

5. Date of the judgment

2015/9/4

6. Parties : Plaintiff

Graphico Inc

Defendant
7. Mark(Joint owner of the trademark) Cardland Inc

Chungmook Kim
Plaintiff

Defendant (disputed trademark)8. Outline of the caseA case in which the court ruled that the trademark, which was filed by the Defendant recognising the existenceof the Plaintiff's trademark, was using for "unfair intention".
9. Summary of the judgment
TV Shopping laboratory, Japanese legal entity, decided to launch soybean protein based diet dietary supplement
and named the product as ‘Naghata gotoni’, which refers to ‘forget everything that happened’ to emphasize thefeature of the product so called ‘No matter how much you eat, you don't gain weight’. The laboratory filed an
application of trademark registration for the prior use trademark ‘Naghata gotoni’, on June 5 in 2002 in Japanand registered the trademark on February 28 in 2003. And the entity has advertised and merchandised the
supplement with prior use trademark through many home shopping channels across the nation since 2003. )Grapico, plaintiff, has developed and distributed products through pharmacy and general store since the Grapico
was established on November 7 in 1996, Grapico has merchandised products with prior use through offline store
and online store such as 「bibalmall.com」,「www.jplug.com」 of Matsumotokiyoshi, pharmacy chain store,
while promoting the products through various broadcasting media since it was received right of non-exclusive
use of prior use trademark from TV Shopping laboratory on September 1 in 2008. Plaintiff signed an exclusive
sales contract on the products with prior use trademark with Korean companies, Card land corporation and H&D
corporation, on December 17 in 2013. Whether the applicant filed an application based on ‘unjust purpose’should be judged by considering following situations. It is judged that the applicant filed and registeredtrademark to make unjust profit based on high quality image of prior use trademark and attraction to customers
by copying prior use trademark and to damage plaintiff by diluting the value of the mark above. As shown
above, the prior use trademark was well known to customers, as if they recognized ‘Grapico’, certain company,as the leading manufacturer of diet dietary supplement when the registered trademark was filed in Japan. It was
not common for Korean company to file an application with only Japanese language trademark and theregistered trademark, ‘Naghata gotoni’, which refers to ‘forget everything that happened’ was too similar to the100

prior use trademark despite the trademark’s creativity.
10. Tags
Suit for cancellation of the registration of a

① Type of trial

trademarkCancellation② Decision③ Type of bad faithFree Ride✓

Imitation by agents or people who have a prior relationship
Interference by a competing company
Lack of intention to use
Others101

【KIPO-3】v.

1. Titlev.

2. Country

Korea

3. Court

Patent Court

4. Case No.

Patent Court 2013 (Heo)174

5. Date of the judgment

2013/7/11

6. Parties : Plaintiff

Guangzhou Nandadi Textile Garment Co., Ltd

Defendant
7. Mark

RCRV, Inc
Plaintiff (disputed trademark)Defendant

8. Outline of the caseA case in which the court ruled that the trademark, which was filed by the Plaintiff recognising the existence of
the Defendant's trademark, was using for "unfair intention".
9. Summary of the judgment
Defendant claimed invalidation trial of registration to Intellectual Property Tribunal against plaintiff, holder of
trademark right (Case 2011 Dang No.1555). It is judged that the registered trademark was identical or similar tothe prior use trademark 1, 2, which were recognized as indicating the defendant’s product in U.S and Germany atthe time of filing the application and the plaintiff filed and registered trademark to make unjust profit or damage
defendant. Defendant claimed that the registration shall be invalided under the Article 71(1)(ⅰ), 7(1)(ⅻ) of theTrademark Act. The Intellectual Property Tribunal decided that the registration of registered trademark is invalid
by accepting request for trial above as the registered trademark conforms Article 7(1) (ⅻ) in connection withprior use trademark 1 and 2 on November 6 in 2012. Facts recognized with one consent, plaintiff’s Exhibit No.1,
2, defendant's Exhibit No.2 or 24, intent of whole pleading. Plaintiff claimed that the registered trademark isirrelevant to prior use trademark, there is no unjust purpose on it and it is the changed one of the trademark
which plaintiff has used before the application (hereafter called 'relevant trademark') According to 1 ofdefendant's exhibit No.6 or each record of No.18, it is acknowledged that plaintiff determined a mark as clothing
as class of goods, filed applications from November 14 in 2006 to June 4 in 2008 in China, Korea, Benelux,
Japan and the U.K and plaintiff manufactured jean with relevant trademark. Therefore, the registered trademark
seems to be a changed one of relevant trademark as its mark is too similar to relevant one. However, plaintiff
filed initial application (November 14 in 2006) after the plaintiff manufactured and distributed jeans with prioruse trademark, the relevant trademark was similar to the prior use trademark as well as the registered trademark.
The facts above demonstrates that plaintiff has unjust purpose as plaintiff's relevant trademark which has beenused by plaintiff since November of 2006, is similar to the registered trademark despite of many circumstances
above. The plaintiff's claim above has no grounds.
10210. Tags① Type of trial

Suit for cancellation of the registration of a trademark② Decision

Cancellation③ Type of bad faithFree Ride✓

Imitation by agents or people who have a prior relationship
Interference by a competing company
Lack of intention to use
Others103

【KIPO-4】v.

1. Titlev.
2. Country

Korea

3. Court

Patent Court

4. Case No.

Patent Court 2015 (Heo) 6343

5. Date of the judgment

2016/5/13

6. Parties : Plaintiff

Hongchul Kim

Defendant
7. Mark

Wonsuk Choi
Plaintiff

Defendant (disputed trademark)8. Outline of the caseA case in which the court ruled that the trademark, which was filed by the Defendant recognising the existenceof the Plaintiff’s trademark, was using for "unfair intention".
9. Summary of the judgment
The plaintiff sold oriental medicine product at store called 'Noble Pharm' in 2002 and established ToPha Korea
Inc on January 17 in 2007(since then the store name was changed into 'Dr. Pharm' on July 24 in 2009 and it waschanged into 'Dr. Pharm. Inc Pharmaceuticals Inc' on March 31 in 2010, hereafter called Dr. Pharm Inc). The
plaintiff has manufactured cosmetics such as BB cream, pore cleansing pack, iced snow skin toner with prior use
trademark, which plaintiff and the company acquired, since the Dr. Pharm Inc was established. And has soldthem on the internet shopping mall and exported through Noble Pharm or Dr. Pharm Inc. Defendant soldsunglasses at the store called 'Sampoong International' in duty free shop in October of 2005, merchandised
cosmetics in duty free shop in March of 2009 and has established and run 'Sampoong International' which
specializes in research, manufacturing, wholesale and retail and distribution since October 19 in 2011. Plaintiff
or Dr. Pharm Inc provided cosmetics such BB cream with prior use trademark with defendant from March of2009 to September of 2010 and allowed the defendant to sell them at defendant’s own duty free shop. It is
acknowledged that the registered trademark was identical or similar to prior use trademark, which wasrecognized as indicating product of plaintiff, Dr. Pharm Inc among customers home and abroad when theapplication is filed and defendant filed and registered the trademark based on unjust purpose to make unfair
profit by go along with prior use trademark's credit, the registered trademark falls under Article 7(1) (ⅻ) of the
trademark Act.
10. Tags① Type of trial

Suit for cancellation of the registration of a trademark

104

② Decision

Cancellation③ Type of bad faith ( Free Ride ✓)Free Ride✓

Imitation by agents or people who have a prior relationship✓

Interference by a competing company
Lack of intention to use
Others105

【KIPO-5】HUM v. Hum
1. Title

HUM v. Hum

2. Country

Korea

3. Court

Patent Court

4. Case No.

Paten Court 2016 (Heo) 1628

5. Date of the judgment

2016/7/22

6. Parties : Plaintiff

Jongsik Kim

Defendant
7. Mark

YK038 Co.,Ltd
Plaintiff (disputed trademark)Defendant

8. Outline of the caseA case in which the court ruled that the trademark, which was filed by the Plaintiff recognising the existence of
the Defendant's trademark, was using for "unfair intention".
9. Summary of the judgment
Defendant has run textile, clothing and fashion business since it was established on September 24 in 1997 andthe defendant has manufactured and merchandised coat, jumper, jacket, pants, skirts and shirt since clothing
brand 'Hum' was launched on January 20 in 2003. Defendant has promoted the brand 'Hum' by naming top
celebrities for advertisement from November 29 of 2002 to the date of the registered trademark application. The
news that TV star Boolam,Choi worked as advertisement model at Hum launch show on November 29 in 2002
was reported on December 10 in 2002 in daily newspaper Munhwailbo and on December 16 in 2002 inInternational Textile News(ITN), news that TV star Eungyung Im worked as advertisement model exclusively
for Hum was reported on June 16 in 2003 in ITN, news that TV star Donggeun Lee, who became popular afterstarring in the TV drama called 'lovers in Paris', worked as advertisement model exclusively for Hum wasreported on July 25 in 2004 in sports news, news that TV star Ahra Go worked as a model exclusively for Hum
was reported on Feb 17 in 2006 in Fashionbiz, on Feb 20 in 2006 in chosun.com and on Aug 7 in 2006 in ITN.
Advertisement photos that TV star Donggeun Lee in Hum clothes were released in Hum catalogue in 2004,
Advertisement photos that TV star Ahra Go in Hum clothes were released in Hum catalogue in 2006. The news
that the brand 'Hum' supported drama 'Yurihwa' and intended to increase awareness of the brand by exposing its
store and clothes were reported on November 15 in 2004 in Fashionbiz and on December 13 in 2004 in ITN. The
prior use trademark is recognized as indicating the defendant's product, the clothing, by domestic consumers on
December 4 in 2008, the date of the registered trademark application, it is acknowledged that the registeredtrademark 'HUM' was identical or similar to prior use trademark 'Hum'. It is judged that the applicant,Myungohk, Ahn filed and registered trademark to make unfair profit based on high quality image of prior use
trademark and attraction to customers by copying prior use trademark and to damage defendant, the user of theprior use trademark, according to 1 of defendant's Exhibit No.3 or 8 and intent of whole pleading.
10610. Tags① Type of trial

Suit for cancellation of the registration of a trademark② Decision

Cancellation③ Type of bad faithFree Ride✓

Imitation by agents or people who have a prior relationship
Interference by a competing company
Lack of intention to use
Others107

【KIPO-6】LOOK v. LOOK
1. Title

LOOK v. LOOK

2. Country

Korea

3. Court

Patent Court

4. Case No.

Patent Court 2014 (Heo) 2276

5. Date of the judgment

2014/9/25

6. Parties : Plaintiff

LOOK CYCLE INTERNATIONAL, societe anonyme

Defendant
7. Mark

Junglan Lee
Plaintiff

Defendant (disputed trademark)8. Outline of the caseA case in which the court ruled that the trademark, which was filed by the Defendant recognising the existenceof the Plaintiff’s trademark, was using for "unfair intention".
9. Summary of the judgment
Plaintiff manufactured ski equipment in 1951 in Nevers, France. Since then plaintiff has manufactured cliplesspedal for bicycle by imitating skibinding since 1984 and carbon frame for bicycle since 1986. The company has
manufactured bicycle and bicycle parts since the ski equipment manufacturing business was separated in 1994.
Plaintiff has manufactured frame or pedal for bicycle with prior use trademark 1 and prior use trademark 2, in1987 and 1991 respectively. News that FCU (France Cycling Union) signed exclusive use contract on cliplesspedal with LOOK Cycle International, societe anonyme (hereafter called LOOK), the company (LOOK) signed
various licensing contract based on source technology on safe pedal, exports 700,000 pedals, which accounts for
60% in domestic market, was (plaintiff’s Exhibit No.11) reported on March 8 in 1992 in Le MONDE, Frenchdaily newspaper. News that the frame created by LOOK/ will be connected to a fork, with the same material ofit, /and French champions who will participate in Barcelona Olympic Games, will have bicycles equipped withthe frame(plaintiff’s Exhibit No.12), was reported on June 10 in 1992. The newspaper on July 8 in 1997 said that‘the revolution was broken out in 1984’ entitled ‘automated pedal’. LOOK and Bernard Hinault invented
automated pedal, after Cinelli, Italian company, tried to invent it. And all professional players and some amateurs(road bicycle and mountain bike players) use this mechanic system to release their feet when falling off(plaintiff’s Exhibit No.13).’ The fact above demonstrates that the prior use trademarks were well known tocustomers for parts of bicycles in France, recognized as indicating the product of the certain person at the time
when of filing of the application for the registered trademark, the registered trademarks were too similar to theprior use trademarks and class of goods of the registered trademarks, bicycle related items including bicycle,
108

frame for bicycle and rim for bicycle, are all identical and the defendant was already aware of the existence ofthe prior use trademark as the defendant has merchandised and repaired bicycle. It is judged that defendant filed
and registered trademark to make unfair profit based on business reputation of prior use trademark by copying
the prior use trademark, well known to customers in France, and to damage plaintiff by diluting the trademark
and interrupting plaintiff’s business based on unfair purpose.
10. Tags① Type of trial

Suit for cancellation of the registration of a trademark② Decision

Cancellation③ Type of bad faithFree Ride✓

Imitation by agents or people who have a prior relationship
Interference by a competing company
Lack of intention to use
Others109

v.

【KIPO-7】
1. Titlev.

2. Country

Korea

3. Court

Patent Court

4. Case No.

Patent Court 2014(Heo) 6209

5. Date of the judgment

2015/1/9

6. Parties : Plaintiff

Vans, Inc

Defendant
7. Mark

Youngmi Kim
Plaintiff

Defendant (disputed trademark)8. Outline of the caseA case in which the court ruled that the trademark, which was filed by the Defendant recognising the existenceof the Plaintiff s trademark, was using for "unfair intention".
9. Summary of the judgment
Plaintiff has manufactured shoes, bags, wallet, belt, clothing, socks and hats with prior use trademark in U.S andCanada since 1971(plaintiff’s Exhibit No.9 and 20)) The catalog, published by plaintiff in the fall of 2008,
contains a variety of cases of shoes with VANS(trademark) and prior use trademark, as shown in the
picture(plaintiff’s Exhibit No.40). The catalog, published by plaintiff in spring of 2009, contains a variety ofcases of shoes with VANS(trademark) and prior use trademark, as shown in the picture (plaintiff’s Exhibit
No.41). Articles from Korea media reported on prior use trademark and product with prior use trademark before
the date of the application for registered trademark are as follows. Skateboarding shoes, which are mounted onskate board, were first manufactured by VANS in 1966. OLD SKOOL, world’s first product, was manufacturedby the company. The value of the skateboarding shoes has increased as shoes of VANS were distributed throughABC Mart, large shoes distributor, 4 years ago in Korea. VANS has been topped of 40 selling brands in ABC
Mart (plaintiff’s Exhibit No.53, Yonhap News reported on October 31 in 2005)). e registered trademark is very
similar to prior use trademark, the prior use trademark was recognized as plaintiff’s leading brand in Korea andhad creativity with unique shape. And class of goods of the registered trademark contains footwear with prior use
trademark. It is acknowledged that the registered trademark is a counterfeiting trademark of prior use trademark,recognized as indicating product of plaintiff and it was filed to damage plaintiff and make unjust profit byinterrupting the conduct of business.
10. Tags① Type of trial

Suit for cancellation of the registration of a trademark② Decision

Cancellation110

③ Type of bad faithFree Ride✓

Imitation by agents or people who have a prior relationship
Interference by a competing company
Lack of intention to use
Others111

【KIPO-8】ROLEX v.
1. Title

ROLEX v.

2. Country

Korea

3. Court

Patent Court

4. Case No.

Patent Court 2014 (Heo) 7776

5. Date of the judgment

2015/5/8

6. Parties : Plaintiff

ROLEX SA

Defendant
7. Mark

EDAMIC Co.,Ltd.
Plaintiff

Defendant (disputed trademark)8. Outline of the caseA case in which the court ruled that the trademark, which was filed by the Defendant recognising the existenceof the Plaintiff’s trademark, was using for "unfair intention".
9. Summary of the judgment
Montres Rolex SA, Plaintiff, has produced and merchandised high functioning and quality watch with prior use
trademark since it was established in 1920 in Geneva, Switzerland. ⓑ The prior use trademark was voted as
one of global top 100 brands by Interbrand, global brand consulting company, in 2000 to 2009, plaintiff has run
official watch stores in 100 countries and merchandised watches with prior use trademark in department stores inmajor cities across the country. ⓒ Plaintiff made 78.1 billion 25.64 million in 2012 and 85.9 billion 48,74
million in 2013, news on the company and prior use trademark was frequently reported by Korea major media
and internet site. ⓓ The prior use trademark is listed in ‘frequently pirated trademark information’ issued by
KIPO and is frequently mentioned as an example to promote eradicating imitation of a well-known trademarkⓔ Brand awareness survey,

plaintiff asked Korea Trademark & Design Association to conduct, showed that

94.2% of respondent said they have heard about watch trademark such as the prior use trademark. The registeredtrademark, such as, is alphabetical mark with somewhat designed last letter ‘X’, tilted slightly to the right, forexample, the prior use trademark is general type alphabetical mark. However, 5 capital alphabets of both marks
are arranged in order, first letter is ‘P’ and ‘R’ respectively, the rest letters ‘OLEX’ are identical. In particular,
there is a stroke difference between letter ‘P’ and ‘R’. The grounds mentioned earlier and intent of whole
pleading of plaintiff’s Exhibit No. 32-37 demonstrate that defendant filed trademark, similar to ' a watch brand,
on May 31 in 2010, a year ago of application for the registered trademark and it had decision to reject theapplication. It is recognized that watch shops with prior use trademark have been in business in department
stores in major cities in Korea and enjoyed high sales. It is judged that the defendant was well aware of112

constitution and awareness of application at the time when of filing of the application for the registeredtrademark and filed an application and registered the trademark aiming at launching the similar kinds of productto one of the prior use trademark. It is judged that the registered trademark is likely to make customers confusedwith the resources by easily associating with prior use trademark, notably recognized as indicating the plaintiff's
product, product with prior use trademark and business. Thus, the registration shall be invalided without any
dispute over plaintiff's remaining claim as the registered trademark falls under Article 7(1)(ⅹ) of the trademark
Act.
10. Tags① Type of trial

Suit for cancellation of the registration of a trademark② Decision

Cancellation③ Type of bad faithFree Ride✓

Imitation by agents or people who have a prior relationship
Interference by a competing company
Lack of intention to use
Others113

【KIPO-9】v.

1. Titlev.

2. Country

Korea

3. Court

Patent Court

4. Case No.

Patent Court 2014 (Heo) 1655

5. Date of the judgment

2014/5/29

6. Parties : Plaintiff

Sieun HaDefendant
7. Mark

Louis Vuitton Malletier
Plaintiff (disputed trademark)Defendant

8. Outline of the caseA case in which the court ruled that the trademark, which was filed by the Plaintiff recognizing the existence of
the Defendant's trademark, was using for "unfair intention".
9. Summary of the judgment
The grounds mentioned earlier and intent of whole pleading of defendant’s Exhibit No. 1 or 9 demonstrates that
defendant (Louis Vuitton Malletier) has manufactured and merchandised bags including handbag since it wasestablished by a designer, Louis Vuitton, in 1854. The prior use trademark of defendant was well known andfamous mark worldwide for bags including handbag. It is clearly obvious that it was listed as ‘frequently pirated
trademark home and abroad’ in ‘foreign trademark information’ and ‘frequently pirated trademark home andabroad’, which were issued annually by KIPO, in 1988 to 2003, at the time of filing and application for theregistered trademark. The gist of a claim of class of goods of the registered trademark has no closer economic
relation to product with prior use trademark. Provided, the relation is just considerable factor to judge ‘unfair
purpose’ under Article 7(1) (ⅻ). Thus, the closer economic relation is not an important factor to determine
whether the claimed trademark falls under the Article above. Given awareness, greatness and creativity of prioruse trademark, plaintiff’s trademark application history and that the registered trademark contains a large numberof products, which have closer economic relation to product with prior use trademark, in addition to class ofgoods of gist of a claim products, plaintiff’s unjust purpose is fully recognized. It is judged that the registeredtrademark falls under Article 7(1) (ⅻ) of the trademark Act even if class of goods of gist of a claim has no closer
economic relation to product with prior use trademark. Thus, plaintiff’s claim above is not acceptable.
10. Tags① Type of trial

Suit for cancellation of the registration of a trademark② Decision

Cancellation
114

③ Type of bad faithFree Ride✓

Imitation by agents or people who have a prior relationship
Interference by a competing company
Lack of intention to use
Others115

【KIPO-10】LOUIS CASTEL v. LOUIS CASTEL
1. Title

LOUIS CASTEL v. LOUIS CASTEL

2. Country

Korea

3. Court

Patent Court

4. Case No.

Patent Court 2014 (Heo) 1938

5. Date of the judgment

2014/8/21

6. Parties : Plaintiff

Deokbum Jung

Defendant
7. Mark(Joint owner of the trademark) Younglak Choi

Jaeyeop Lee
Plaintiff (disputed trademark)Defendant

8. Outline of the caseA case in which the court ruled that the trademark, which was filed by the Plaintiff recognising the existence of
the Defendant's trademark, was using for "unfair intention".
9. Summary of the judgment
Defendant is a CEO of VL & CO Inc, established on March 2 in 2007, approved the company to use prior use
trademark at the time. VL & CO Inc has manufactured and merchandised bags, hats, belts, key holder, necktieand socks including golf clothing with prior use trademark. VL & CO Inc has manufactured and merchandised
products since the later half of 2007. The company made 6,288,818,576 won the second half of 2007 and
2,958,985,254 won the first half of 2008, golf clothing was a major contributor to its revenue. VL & CO Inc
opened high end brand store, direct management store, in Yangjae-dong, Seoul in September 2007. It opened 20
stores in Seoul, Ilsan, Daegu, Busan, Gangneung, Donghae(East sea), Pohang and Jeju island by the end of 2007,
most of which were more than 100 ㎡ and located in major business districts.
*Determination on whether the applicant of the registered trademark has unfair purpose
The facts recognized above and fact recognized based on defendant’s Exhibit No. 1, No.67 and 68 are as
follows. Prior use trademark was well known to customers home and abroad indicating it as certain person’s
product as golf clothing at the time of filing the application for the registered trademark. Prior use trademark 1,‘LOUIS' in French (LOUIS gold coin, its denomination is 20 franc) and ’CASTEL’ (castle) are combined, which
is an inventive combination. It has relatively high creativity, the registered trademark has same combination as
the prior use trademark.Sunglasses, sports goggles and golf clothing with prior use trademark, the class of goods,
were manufactured and merchandised by a single manufacturer at the time of filing the application for theregistered trademark. In other words, sunglasses, sports goggles with the registered trademark are likely to berecognized as using similar product to ‘golf clothing’ and can lead to misunderstanding as if they are used byholder of prior use trademark right. The fact demonstrates that the applicant, Taesoo Lee, filed and registeredtrademark to make unfair profit based on business reputation of prior use trademark 1 by copying the prior use

116

trademark 1, well known to customers, and to damage defendant by diluting the trademark and interrupting
defendant’s business based on unfair purpose.
10. Tags① Type of trial

Suit for cancellation of the registration of a trademark② Decision

Cancellation③ Type of bad faithFree Ride✓

Imitation by agents or people who have a prior relationship
Interference by a competing company
Lack of intention to use
Others117

【KIPO-11】MK v. MK
1. Title

MK v. MK

2. Country

The Republic of Korea

3. Court

The Patent Court of Korea

4. Case No.

2017Huh2604

5. Date of the judgment

April 13, 2018

6. Parties : Plaintiff

Ki Joon Kim

Defendant
7. Mark

Michael Kors (Switzerland) International GmbH]
Plaintiff (disputed trademark)Defendant

8. Outline of the case
It was determined that the disputed trademark was filed to take unfair advantage of goodwill in the prior mark by
imitating the mark which is recognized at home and aboard as a sign which identifies products of Michael Kors
International GmbH.
9. Summary of the judgment
Comprehensively considering the revenue, advertising costs in relation to defendant’s trademarks, the way how
they have been used, the extent to which they have been exposed via various media (e.g. newspaper), the priormark was deemed to have been known as a sign which indicates products of a certain person in the US andKorea. The designated goods of the disputed trademarks, artificial leathers and bags under Class 18 andsneakers, dresses, suits, neckties, scarfs, belts made of leather under Class 25, are similar to or have economic
relation with those of the prior mark which are bags, wallets and scarfs. Furthermore composition motive andappearance of the prior and the disputed marks are so similar that it is reasonable to determine that the disputed
marks are an imitation of the prior mark. Also, looking at how those marks have been used, it is difficult todistinguish the defendant’s goods from the plaintiff’s. Thus, it is considered that the defendant intended to takeunfair advantage of goodwill in the trademark of Michael Kors.
In conclusion, the Patent Court of Korea ruled that the registration was invalidated by comprehensively
considering evidence provided by the defendant and ruled that the disputed marks were filed to free ride on theaccumulated reputation on good quality and the brand power of the prior mark which had been known as anindication of products of Michael Kors by consumers and traders at home and abroad.

118

10. Tags① Type of trial

Invalidation Trial② Decision

Invalidation③ Type of bad faith✓Free Ride
Imitation by agents or people who have a prior relationship
Interference by a competing company
Lack of intention to use
Others119

【KIPO-12】THEZARA v. ZARA
1. Title

THEZARA v. ZARA

2. Country

Korea

3. Court

The Patent Court of Korea

4. Case No.

2017huh2109

5. Date of the judgment

Sep 21, 2017.

6. Parties : Plaintiff

Industria de Diseño Textil, S.A. (Inditex, S.A.)

Defendant
7. Mark

Byung Kwan Choi
Plaintiff

Defendant (disputed trademark)8. Outline of the case
The registration of the disputed trademark was invalidated as it was determined to be filed to take unfair
advantage of goodwill in the prior mark by imitating the mark which had been recognized at home and abroad asa sign that indicates products of a certain person.
9. Summary of the judgment
Since the distinctive nature of “THE”, a definite article, included in the disputed trademark is very weak,“ZARA” in the mark serves as the principal part of the trademark, which makes the sound and concept of theplaintiff’s mark and the disputed mark identical.
The designated goods of the both marks were also determined to be similar based on the following facts: (1) the
defendant put the space between “THE” and “ZARA” in the trademark when using it for the signboard of a hotel
and an advertisement website, (e.g. “THE ZARA”), (2) the plaintiff expanded his business to produce bedding
and household products for hotels and motels in 2003, and (3) opened shops branded as “ZARA HOME” inKorea in 2008, in particular, bedding products marked with “THE ZARA” were found in certain hotels in
operation. Since the defendant’s main consumers which are hotel and motel users are overlapped with plaintiff’s
consumers who buy clothes, if the disputed mark is used for the signboard of accommodation facilities, andbedding and household products, general consumers are likely to be confused as to the source of services. All inall, the disputed mark is determined to be filed to take unfair advantage of goodwill in the prior mark.
10. Tags① Type of trial

Invalidation Trial② Decision

Invalidation120

③ Type of bad faith✓Free Ride
Imitation by agents or people who have a prior relationship✓

Interference by a competing company
Lack of intention to use
Others121

【KIPO-13】Mango Monster v. Monster Energy
1. Title

Mango Monster v. Monster Energy

2. Country

Korea

3. Court

The Supreme Court

4. Case No.

2016Hu2447

5. Date of the judgment

Mar 15, 2017

6. Parties : Plaintiff

Monster Energy Company

Defendant
7. MarkJung Hoon Lee
Plaintiff

Defendant (disputed trademark)* In English Transliteration “Mango
Monster”

8. Outline of the case
The plaintiff argued that the disputed trademark is so similar to the prior mark that it can cause confusion as tothe source of the goods, thereby deceiving consumers. And the plaintiff went on to say that the defendant filed
the trademark to take unfair advantage. However the Patent Court of Korea and the Supreme Court ruled that
there is no likelihood of confusion since the two marks were not similar.
9. Summary of the judgment
Both the disputed trademark and the prior service mark have 몬스터 (monster in Korean transliteration) or
monster in common. But there existed multiple marks in relation to similar services such as ‘ICEMONSTER','티켓몬스터(Ticket Monster in Korean Transliteration)’, ‘클럽몬스터(Club Monster in Korean Transliteration)’,‘CLUB MONSTER’, ‘MONSTER PIZZA', ‘monster zym',’ ‘bubble monster' which have been either registeredor published as a filed trademark. Thus, considering specific trading circumstances in relation to those multiple
trademarks including monster or 몬스터 (monster in Korea transliteration), the distinctive nature of “monster”
included in the mark is considered weak and it is inappropriate to grant an exclusive right to use it to a certain
person. Thus, “몬스터” and “monster” cannot be considered a principal part of the mark which has distinctive
nature.
On the other hand, “MANGO” included in the registered service mark indicates ingredients of beverages or ice
creams and “ENERGY” included in the service mark also indicates function of the designated goods, which areconsidered to be non-distinctive or whose distinctive nature is considered to be weak. Thus, looking at the words
subject to judgment, the distinctive nature of the composite words is so insignificant that the two marks need tobe compared with each other as a whole.
The two marks are different based of the following facts: (1) one in Korean words and the other in English
122

words, (2) the number of letters composed of the trademarks, and (3) the font style. Also, the sound and conceptof the registered service mark of “mango monster” are different from those of the disputed mark “monster
energy”. Hence, the registered mark and disputed mark are different in appearance, sound and concept.
10. Tags① Type of trial

Invalidation Trial② Decision

Dismissed③ Type of bad faith✓Free Ride
Imitation by agents or people who have a prior relationship
Interference by a competing company
Lack of intention to use✓

Others123

【KIPO-14】Kosney v. KOSNEY
1. Title

Kosney v. KOSNEY

2. Country

The Republic of Korea

3. Court

The Patent Court of Korea

4. Case No.

2010Huh2902

5. Date of the judgment

Oct 20, 2010.

6. Parties : Plaintiff

Prime International

Defendant
7. Mark

Sang Young Jeon
Plaintiff*

In

Defendant (disputed trademark)EnglishTransliteration“KOSNEY”

8. Outline of the case
The plaintiff’s prior service mark is widely known by consumers and traders in Korea as a service mark of acertain person and the designated goods of the disputed marks are similar or have economic relations with thoseof the prior service mark so that the disputed mark is likely to cause confusion as to the source of the services.
9. Summary of the judgment
The plaintiff’s prior service mark had been used in shops which offer diverse living products from interior items
such as bedding products, beads cushions, curtains and fabric items to living items such as bathroom products,
clothing, shoes, accessories, stationary, dolls, music albums, sunglasses and hats. The disputed trademark’s
designated goods “clothing, shoes, hats and accessories” are the same as the products that are offered in the shopwhere the prior service mark is being used. As such, the disputed service mark is used in the same place targetingthe same consumer range of the prior service mark. On top of that, considering the commonplace of the total
fashion trend where a company promotes a brand and use it for a range of products including clothing, shoes,
hats and accessories and display them at the brand’s shop, if the disputed mark is used for the same kind ofsimilar products to which the prior service mark is applied, consumers can be confused as to the source of thegoods.
10. Tags① Type of trial

Invalidation Trial② Decision

Invalidation③ Type of bad faith✓Free Ride
124

Imitation by agents or people who have a prior relationship
Interference by a competing company
Lack of intention to use✓

Others125

【KIPO-15】GENTLE MONSTER v. GENTLE MONSTER
1. Title

GENTLE MONSTER v. GENTLE MONSTER

2. Country

The Republic of Korea

3. Court

The Intellectual Property Trial and Appeal Board

4. Case No.

2016Dang1189

5. Date of the judgment

Mar 3, 2017

6. Parties : Plaintiff

I.I.Combined

Defendant
7. Mark

Keun A Sohn
Plaintiff

Defendant (disputed trademark)

GENTLE MONSTER

8. Outline of the case
While the plaintiff argued that the disputed trademark was likely to cause confusion as to the source of thegoods, thereby deceiving consumers and was filed to take unfair advantage, the IPTAB(The Intellectual Property
Trial and Appeal Board) determined that the dispute trademark was not an imitation of the plaintiff’s trademark
since the plaintiff’s trademark had not been widely known as a sign which indicate the goods of a certain person,
the disputed trademark’s designated goods were different from those of the plaintiff’s and there existed multiple
composition trademarks in which “Monster” and “Gentle” are combined.
9. Summary of the judgment
As the designated goods of the disputed and prior trademarks are “furniture and picture frames” and “sunglasses
and glasses” respectively, the producers and traders in relation to these trademarks are those who engage in thefurniture and optical businesses respectively. Thus, the shops and consumers of those products are different fromeach other. Thus, there is no economic relation between them. On the other hands, the meanings of the words“gentle” and “monster” are contradictory but considering the fact that there exist multiple registered trademarks
composed of “monster” and “gentle”, it is hard to see that the disputed trademark imitated the prior mark.
Accordingly, it is determined that the disputed trademark does not cause confusion or deception as to the sourceof the goods among traders and consumers and was not filed to take unfair advantage of goodwill in the priortrademark.
10. Tags① Type of trial

Invalidation Trial② Decision

Validation③ Type of bad faith✓Free Ride
Imitation by agents or people who have a prior relationship126

Interference by a competing company
Lack of intention to use✓

Others127

Case Examples of USPTO128

【USPTO-1】NATIONSTAR MORTAGE v. NationStar
1. Title

NATIONSTAR MORTAGE v. NationStar

2. Country

United States

3. Court

Trademark Trial and Appeal Board

4. Case No.

Opposition No. 91184456

5. Date of the judgment

2014/9/30 [citation: Nationstar Mortg. LLC v. Ahmad, 112 USPQ2d 1361 (TTAB
2014)]

6. Parties : Plaintiff
Defendant
7. Mark

Nationstar Mortgage LLC
Mujahid Ahmad
Plaintiff

Defendant (disputed trademark)

NATIONSTAR MORTGAGE

NationStar
8. Outline of the case
Opposition filed by Nationstar Mortgage (Opposer) against application for the mark NATIONSTAR for various
real estate brokerage services filed by Mujahid Ahmad (Applicant) on the grounds of fraud, likelihood ofconfusion, and lack of bona fide intent to use.
9. Summary of the judgment
The Trademark Trial and Appeal Board (Board) held that Applicant’s averments as to his use of NATIONSTAR
for the services identified were fraudulent. The application contained a statement that “The applicant, or theapplicant’s related company or licensee, is using the mark in commerce…” and was signed by the Applicant as
Owner. Applicant provided specimens with a signed declaration under 37. C.F.R. Section 2.20 in response to
an Office action. During the course of the opposition, the Applicant amended the application to an intent to use
application.
Opposer filed the opposition based on fraud, alleging that the Applicant did not use the mark for any of theidentified services prior to filing the application, submitted a fabricated specimen, and knowingly made false
statements as to use of mark with intent to deceive the USPTO.
During the proceeding, the Board found that the Applicant’s testimony was characterized by contradictions andinconsistencies. For example, Applicant testified he is owner, president and sole person who runs NationStar
Mortgage, Inc., yet did not know if the company had earned any income or had any revenue. Applicant
admitted that NationStar Mortgage, Inc. did not have a bank account and had never rendered any payments.
Applicant tried to dodge answering simple questions as to whether company had not done any business and had
129filed any tax returns. Applicant did not answer the straightforward question whether he knew of or had placeda telephone directly listing under the name NATIONSTAR, and was unable or unwilling to identify who createdbusiness cards, postcards and flyers. The Board noted that oral testimony “should not be characterized bycontradictions, inconsistencies and indefinitely but should carry with it conviction of its accuracy andapplicability.” B.R. Baker Co. v. Lebow Bros., 150 F.2d 580, 583, 66 USPQ 232, 236 (CCPA 1945). The
record established that Applicant could not lawfully hold himself out as a mortgage broker, insurance broker orreal estate broker because he was not properly licensed at the time he filed the application.
The Board found that the applicant was not using the mark NATIONSTAR in commerce in connection with anyof the services identified – the record at best establishes that Applicant may have rendered real estate agency
services under the mark NATIONSTAR prior to the filing date; however, real estate agency services were notlisted on the application. The law does not require “smoking gun” evidence of deceptive intent but instead has
long recognized that direct evidence of deceptive intent is rarely available and deceptive intent may be inferredfrom the surrounding facts and circumstances. The surrounding facts and circumstances provide clear andconvincing evidence that Applicant did not have a good faith reasonable basis for believing that he was using the
NATIONSTAR mark in commerce for all the services identified in the application. Because the opposition was
sustained on the grounds of fraud, the Board did not reach the additional grounds of likelihood of confusion andlack of bona fide intent to use the mark in commerce.
10. Tags① Type of trial

Opposition to the registration② Decision

Opposition sustained (application denied)③ Type of bad faithFree Ride
Imitation by agents or people who have a prior relationship
Interference by a competing company
Lack of intention to use✓

Others130

v.

【USPTO-2】
1. Titlev.
2. Country

United States

3. Court

Trademark Trial and Appeal Board

4. Case No.

Opposition Nos. 91171146 and 91171147

5. Date of the judgment

2010/4/23 [citation: Taiwan Semiconductor Mfg. Co. v. Semiconductor Mfg. Int’l(Shanghai) Corp., 2010 TTAB LEXIS 117, 2010 WL 1791171 (TTAB Apr. 23,
2010)]

6. Parties : Plaintiff
Defendant
7. Mark

Taiwan Semiconductor Manufacturing Co., Ltd.
Semiconductor Manufacturing International (Shanghai) Corporation
Plaintiff

Defendant (disputed trademark)8. Outline of the case
Opposition filed by Taiwan Semiconductor Manufacturing (Opposer) against the application for SMIC and
Design for semiconductors and integrated circuits and other related goods filed by Semiconductor Manufacturing
International (Shanghai) Corporation (Applicant) on the basis of a likelihood of confusion with the registered
mark TSMC and Design for semiconductors and integrated circuits.
9. Summary of the judgment
The Trademark Trial and Appeal Board (Board) sustained the opposition on the grounds of likelihood ofconfusion. The Board considered a number of factors, including the similarities in the marks and goods andservices and evidence of bad faith. With regard to evidence of bad faith, the Board found that Applicant’s
history with the opposer should be considered to determine Applicant’s intentions. Applicant arrived on thescene thirteen years after opposer was founded, and within two years, a foreign court had issued an injunction
prohibiting Applicant from soliciting or hiring certain classes of Opposer’s employees. Opposer then filed four
law suits against Applicant between December 2003 and August 2004, including multiple claims of patent
infringement, unfair competition, trade secrets misappropriation, and interference with business relationships.
As part of a settlement, Applicant agreed to pay opposer 175 million dollars and promised to cease and abstain
from making statements that would suggest to third parties that SMIC’s processes use or are derived from TSMC
information.
Based on this and other evidence, the Board found that Applicant had been complicit in multiple attempts tomisappropriate and infringe Opposer’s intellectual property rights. Moreover, Applicant’s logo over the years
had moved closer to Opposer’s long established design logo. The Board found that Applicant’s action, taken as131

a whole, demonstrates a history of blatant disregard for Opposer’s intellectual property rights. This factor,
balanced with the similarities in the marks and the identical nature of the goods or services, led to a finding of
likelihood of confusion.
10. Tags① Type of trial

Opposition to the registration② Decision

Opposition sustained (application denied)③ Type of bad faithFree Ride✓

Imitation by agents or people who have a prior relationship
Interference by a competing company✓

Lack of intention to use
Others132

【USPTO-3】CHIRO-KLENZ v. SUPER CHIRO TEA
1. Title

CHIRO-KLENZ v. SUPER CHIRO TEA

2. Country

United States

3. Court

Trademark Trial and Appeal Board

4. Case No.

Opposition No. 91193427

5. Date of the judgment

2012/3/30 [citation: Edom Labs. Inc. v. Lichter, 102 USPQ2d 1546 (TTAB 2012)]

6. Parties : Plaintiff

Edom laboratories, Inc.

Defendant
7. Mark

Glenn Lichter
Plaintiff

Defendant (disputed trademark)

CHIRO-KLENZSUPER CHIRO TEA

8. Outline of the case
Opposition filed by Edom Laboratories against the application SUPER CHIRO TEA for herbal teas for
medicinal purposes on the grounds of likelihood of confusion with the registered mark CHIRO-KLENZ for
herbal teas for medicinal purposes filed by Glenn Lichter, alleging bad faith.
9. Summary of the judgment
The Trademark Trial and Appeal Board (Board) held that Applicant’s mark SUPER CHIRO TEA is likely tocause confusion with Opposer’s mark CHIRO-KLENZ, finding that Applicant acted in bad faith in adopting its
mark. In assessing a likelihood of confusion, the Board considered a number of factors, including the similarityof the marks and the goods, as well as extensive evidence of bad faith. In addition to copying Opposer’s tradedress, evidence was introduced that the packaging of Applicant’s SUPER CHIRO TEA tea included a tag line:“FROM THE ORIGINAL MAKERS OF CHIRO-KLENZ”.

Moreover, Applicant owns domain namewww.chiroklenzforless.com, re-directs visitors to his www.superchirotea.com website, and uses testimonials
from CHIRO-KLENZ on his website to promote SUPER CHIRO TEA. Evidence was further introduced that
Applicant substituted delivery of SUPER CHIRO TEA for an order of CHIRO-KLENZ.
Applicant’s SUPER CHIRO TEA product comparison page has in small print:

In addition,“Not affiliated with Edom

Laboratories, Inc., the owner of the TM CHIRO-KLENZ”, but also says “from the Original Formulators of
CHIRO-KLENZ Tea.” Applicant also had a pattern of bad faith actions leading up to this opposition, including
having filed a petition to cancel Opposer’s CHIRO-KLENZ registration.
The Board held that SUPER CHIRO TEA is similar in sight, sound, meaning and commercial impression to
Opposer’s mark CHIRO-KLENZ, and that the goods are legally identical and available to the same classes ofconsumers through similar trade channels. The Board determined that Applicant has been trading off the
goodwill in Opposer’s mark to Opposer’s detriment, and that “bad faith is strong evidence that confusion is
likely, as such an inference is drawn from the imitator’s expectation of confusion.”133

10. Tags① Type of trial

Opposition to the registration② Decision

Opposition sustained (application denied)③ Type of bad faithFree Ride✓

Imitation by agents or people who have a prior relationship
Interference by a competing company
Lack of intention to use
Others134

【USPTO-4】AUDITORIO TELMEX v. TELMEX
1. Title

AUDITORIO TELMEX v. TELMEX

2. Country

United States

3. Court

Court of Appeals for the Federal Circuit

4. Case No.

No. 2010-1558

5. Date of the judgment

2012/7/11[citation: Estrada v. Telefonos De Mexico, S.A.B. de C.V., 447 F. App’x
197 (Fed. Cir. 2011)]

6. Parties : Plaintiff
Defendant
7. Mark

Telefonos de Mexico
Andres Estrada
Plaintiff

Defendant (disputed trademark)

AUDITORIO TELMEXTELMEX

8. Outline of the case
Opposition filed by Telefonos de Mexico (Opposer) against Andres Estrada (Applicant) on the grounds that themark AUDITORIO TELMEX for arena and entertainment services are likely to be confused with the common
law mark TELMEX for telecommunication services. Opposition was sustained and appealed to the Court ofAppeals for the Federal Circuit.
9. Summary of the judgment
The Court of Appeals for the Federal Circuit (Court) upheld the decision of the Trademark Trial and Appeal
Board (Board), concluding that substantial evidence supported the Board’s finding of Applicant’s bad faith,
which supported a likelihood of confusion. These facts included that Opposer began using the mark TELMEX
in the United States for telecommunication and telephone calling card services prior to the filing date of both
opposed applications. Although Opposer’s mark was in use in the United States, Opposer had no significant
market share and no proof of reputation or fame in the United States. Nevertheless, Opposer is a major
telecommunication company based in Mexico, and began offering it services in Mexico in 1947. Opposer has
used its TELMEX mark throughout all of Mexico, on billboards, on pay phones, in printed media, etc. Opposeralso provides telecommunication services to several countries in Central and South America and sponsors a large
arena under the AUDITORIO TELMEX mark in Guadalajara, Mexico. For 30 years, Applicant had lived in
Mexico and resided 10 miles away from the arena. Although Applicant lived near the arena for three decades,
he denied any prior knowledge of Opposer’s mark. Applicant further claimed that he had made up the mark.
Applicant continued to be evasive in his discovery responses, alleging that he had never used a phone booth, pay
phone or public phone, and thus did not have any exposure to the TELMEX mark. Based on this evidence, theBoard found that the circumstances lead to “inescapable conclusion” that Applicant filed in bad faith.
Although Applicant on appeal challenged the Board’s findings on other likelihood of confusion factors such as
the strength of the TELMEX mark, the similarity of the marks, and the similarity of the services, the Court
135

upheld the Board’s decision, concluding that substantial evidence supported the Board’s findings of likelihood ofconfusion based on these factors, along with Applicant’s bad faith.
10. Tags① Type of trial

Appeal of Opposition Decision② Decision

Opposition
denied)③ Type of bad faithFree Ride✓

Imitation by agents or people who have a prior relationship
Interference by a competing company
Lack of intention to use
Others136

decision

upheld(application

【USPTO-5】UVF861 v. UVF861
1. Title

UVF861 v. UVF861

2. Country

United States

3. Court

Trademark Trial and Appeal Board

4. Case No.

Cancellation No. 92057088

5. Date of the judgment

2015/6/29[Citation: UVeritech, Inc. v. Amax Lighting, Inc., 115 USPQ2d 1242
(TTAB 2015)]

6. Parties : Plaintiff
Defendant
7. Mark

Uveritech, Inc.
Amax Lighting, Inc.
Plaintiff

Defendant (disputed trademark)

UVF861

UVF861

8. Outline of the caseThis case involves a cancellation proceeding between a U.S. seller (Petitioner) and its foreign manufacturer(Respondent) over ownership of the mark UVF861 for light bulbs and fixtures. Petitioner argued that the goods
were manufactured to its order, and therefore it owned the mark. Respondent argued that as manufacturer it
owned the mark because Petitioner was a mere distributor.
9. Summary of the judgment
The Trademark Trial and Appeal Board (Board) found that the Petitioner was the rightful owner of the mark.
Although this proceeding was brought on the ground of likelihood of confusion, the actual issue in this case wasownership of the mark. Although usually there is a presumption that the manufacturer is the owner of adisputed mark, this may be rebutted. In this case, since there was a neglect of formalities in defining thebusiness relationship, the Board looked at the following relevant factors:(1) which party created and first affixed the mark to the product;(2) which party’s name appeared with the trademark on packaging and promotional materials;(3) which party maintained the quality and uniformity of the product, including technical changes;(4) which party does the consuming public believe stands behind the product, e.g., to whom customers directcomplaints and turn to for correction of defective products;(5) which party paid for advertising; and(6) what a party represents to others about the source or origin of the product.
The Board found that testimony and evidence in the case established that the Petitioner designed the bulbs andconceived the mark UVF861. In addition, the Petitioner contracted, although not in a written document, with
Respondent to manufacture the bulbs under the mark according to Petitioner’s specification to be compatible
with Petitioner’s equipment.

Moreover, it was Petitioner’s decision to market bulbs under UVF861and137

Petitioner controlled technical changes to bulbs. At one point, due to quality concerns, Petitioner transferred
production to another manufacturer, yet Respondent never alleged infringement. When quality problems arose,customers approached Petitioner not Respondent. The literature distributed with the Petitioner's bulbs had thePetitioner listed as the manufacturer. There was no evidence introduced regarding advertising of the product,
so this factor was neutral. As a result, the Board found that the Petitioner was the owner of the mark.
10. Tags① Type of trial

Petition for cancellation of trademark registration② Decision

Cancelled③ Type of bad faithFree Ride
Imitation by agents or people who have a prior relationship
Interference by a competing company
Lack of intention to use
Others138✓

【USPTO-6】Benny Goodman Collection THE FINEST QUALITY v. BENNY GOODMAN
1. Title

Benny Goodman Collection THE FINEST QUALITY v. BENNY GOODMAN

2. Country

United States

3. Court

Trademark Trial and Appeal Board

4. Case No.

Application Serial No. 77600412

5. Date of the judgment

2012/7/11 [citation: In re Jackson Int’l Trading Co., 103 USPQ2d 1417 (TTAB
2012)]

6. Parties : Plaintiff

Jackson International Trading Co. Kurt D. Bruhl GmbH & Co. KG

Defendant
7. Mark

Plaintiff (disputed trademark)Defendant

8. Outline of the case
An application for the mark BENNY GOODMAN COLLECTION THE FINEST QUALITY (stylized) for
fragrances, cosmetics, leather, and clothing filed by Jackson International Trading Co. was refused by the
Examining Attorney (Examiner) under Section 2(a) of the Trademark Act for falsely suggesting a connection
with the musician Benny Goodman. Appealed to the Trademark Trial and Appeal Board (Board).
9. Summary of the judgment
The Board upheld the Examiner and found that Benny Goodman has fame or renown such that the use of thatname as a trademark by an unauthorized user will falsely suggest a connection with the musician Benny
Goodman.
Under Section 2(a), the Examiner needed to prove:(1) the mark sought is the same as or a close approximation of the name or identity previously used by anotherperson or institution;(2) the mark would be recognized as such because it points uniquely and unmistakably to that person or
institution;(3) the person or institution identified in the mark is not connected with the goods sold or services performed byapplicant under the mark; and(4) the fame or reputation of the named person or institution is of such a nature that a connection with such
person or institution would be presumed when applicant’s mark is used on its goods and/or services.
The applicant did not contest that the mark is a close approximation of the late bandleader Benny Goodman.
The Board held that the public would perceive the mark as pointing unmistakably to the late bandleader, for139

several reasons. The record showed that the Estate of Benny Goodman continues to protect its IP rights today.
For example, the bennygoodman.com website provides that “CGM Worldwide is the exclusive representative for
the Estate of Benny Goodman…The words and the signature “Benny Goodman” are trademarks owned andprotected by the Estate of Benny Goodman…Any use of the above, without the express written consent of theEstate, is strictly prohibited.”

Moreover, a search for “Benny Goodman” on the Internet produced excerpts

from sources such as the Britannica Concise Encyclopedia, Music Encyclopedia, U.S. History Companion,
Columbia Encyclopedia, The Fine Arts Dictionary, and Filmography showing that Benny Goodman was afamous jazz clarinetist, composer and bandleader, and that he is known as “The King of Swing,” “TheProfessor,” “Patriarch of the Clarinet,” and “Swing’s Senior Statesman.” The record also included excerpts
from the last.fm, Amazon.com, and Borders.com websites, showing that sales of Benny Goodman recordings
continue to this day. These facts also showed that the late bandleader remains famous.
The Board noted that it is commonplace for performers and owners of well-known marks to expand their productlines to incorporate a diverse set of goods, and that licensing of commercial trademarks for use on collateral
products such as clothing, linens, etc. which are unrelated to those goods on which the marks are normally used
has become common practice. The Board concluded that, in the context of applicant’s fragrances, cosmetics,
leather goods and clothing, consumers would view the mark as pointing only to Benny Goodman, thebandleader, composer and clarinetist.
10. Tags① Type of trial

Appeal of examiner's decision of refusal② Decision

Refusal upheld (application denied)③ Type of bad faithFree Ride✓

Imitation by agents or people who have a prior relationship
Interference by a competing company
Lack of intention to use
Others140

【USPTO-7】FLANAX v. FLANAX
1. Title

FLANAX v. FLANAX

2. Country

United States

3. Court

Court of Appeals for the Fourth Circuit

4. Case No.

No. 15-1335

5. Date of the opinion

2016/3/23[citation: Belmora LLC v. Bayer Consumer Care AG, 819 F.3d 697 (4thCir. 2016)]

6. Parties :Original Plaintiff

Bayer Consumer Care AG

Original DefendantBelmora LLC

7. Mark

Plaintiff

Defendant (disputed trademark)FLANAXFLANAX

8. Outline of the caseThis case involves the question of whether the Lanham Act permits the owner of a foreign mark well-known
among U.S. consumers, but not registered or used in the United States, to seek cancellation of the registration fora mark used to misrepresent the source of goods as those produced by the foreign trademark owner, to pursue afalse-association claim based on the domestic trademark owner’s passing off of its products as those of theforeign mark owner, and to pursue related false-advertising claims.
9. Summary of opinion
Bayer owns a Mexican registration and uses the mark FLANAX for pain relievers in Mexico. Bayer assertsthat its FLANAX mark is also known to U.S. consumers, although Bayer does not sell its FLANAX product in
the United States. After Bayer’s FLANAX mark became known to U.S. consumers, Belmora registered andbegan using the FLANAX mark in the United States, also for pain relievers. Belmora’s advertising andpackaging included language that suggested that Belmora’s FLANAX product came from Bayer.
Bayer first filed a Trademark Trial and Appeal Board (TTAB or Board) action seeking cancellation of Belmora’s
FLANAX registration for misrepresentation of source under Section 14(3). The TTAB granted Bayer’s petition
for cancellation and ordered Belmora’s FLANAX registration cancelled. The TTAB decision was reviewed in
the United States District Court for the Eastern District of Virginia after Belmora sought review in the Court ofAppeals for the Federal Circuit and Bayer elected to proceed in district court. At the district court, Bayer added
claims under Section 43(a) for false designation of origin and false advertising.
The district court found that use of a mark in the United States was required to bring a claim under Section 43(a)or to petition to cancel a mark for misrepresentation of source under Section 14(3). Thus, it dismissed Bayer’s
unfair competition and false advertising claims under section 43(a) of the Lanham Act because Bayer did not141allege prior use of its own FLANAX mark in the United States. The district court also held that the Board erred
in not dismissing Bayer’s misrepresentation of source ground under Section 14(3) because Bayer did not allege
prior use of its own FLANAX mark in the United States.
The Court of Appeals for the Fourth Circuit reversed. The Fourth Circuit found that Bayer has a cognizablefalse-association claim by following the plain, broad statutory language found in the Lanham Act.
Additionally, the Fourth Circuit clarified past precedent that seemingly imposed a requirement not present in thestatutory language of Section 43(a) that a plaintiff must plead rights in a trademark in order to have a cognizablefalse-association/unfair competition claim.

It held: “In sum, the Lanham Act’s plain language contains no

unstated requirement that a Section 43(a) plaintiff have used a U.S. trademark in U.S. commerce to bring aLanham Act unfair competition claim. The Supreme Court’s guidance in Lexmark does not allude to one, andour prior cases either only assumed or articulated as dicta that such a requirement existed. Thus, the district
court erred in imposing such a condition precedent upon Bayer’s claims.”
10. Tags① Type of trial

Appeal of cancellation of the registration of a trademark② Decision

Pending, remanded for consideration by district court③ Type of bad faithFree Ride✓

Imitation by agents or people who have a prior relationship
Interference by a competing company
Lack of intention to use
Others142

【USPTO-8】IWATCH v. SWATCH
1. Title

IWATCH v. SWATCH

2. Country

United States

3. Court

U.S. Court of Appeals for the Federal Circuit

4. Case No.

No. 2014-1219

5. Date of the judgment

June 4 2015[citation: M.Z. Berger & Co., Inc. v. Swatch AG, 787 F.3d 1368 (Fed.
Cir. 2015)]

6. Parties :Applicant (Appellant)

M.Z. Berger & Co.

Opposer (Appellee)

Swatch AG

7. Mark

Applicant (Appellant) (disputed

Opposer (Appellee)

trademark)

IWATCH

SWATCH

8. Outline of the caseSwatch opposed the application for the mark IWATCH on grounds of likelihood of confusion with SWATCH for
watches and a lack of bona fide intent to use. The opposition was sustained on a lack of bona fide intent to use,
but no likelihood of confusion was found. Case appealed to the Court of Appeals for the Federal Circuit.
9. Summary of the judgment
The Court of Appeals for the Federal Circuit (Court) upheld the decision of the Trademark Trial and Appeal
Board (Board), finding a lack of bona fide intent to use but no likelihood of confusion. In its determination, theCourt considered a number of facts showing a lack of genuine intent to use the mark. Although the applicant
applied for watches, clocks, and other items, the testimony of record showed that Applicant never intended forthe mark to be used on any goods other than watches. With respect to watches, the applicant lacked a genuine
plan to commercialize the iWatch on watches because the documents produced related solely to the prosecutionof the application for registration. In fact, the only documents produced were (1) a trademark search (a coupleof days prior to filing), (ii) internal email concerning the application, and (iii) internal emails forwarding imagesof watches and a clock bearing the iWatch mark (in response to USPTO request for additional information). In
addition, the employees told inconsistent stories about the company’s intent to commercialize the mark on
watches. Although the company has a long history in the watch business, Applicant’s inaction with thepotential iWatch product diminished the value of the evidence of a long history in the business. Rather, thetestimony from Berger indicated that intent was to merely reserve the mark: “if we decided to do a – either atechnology watch or information watch or something that would have that type of characteristics that would be agood mark for it.”
The Court noted that “bona fide” should be read as a fair, objective determination of intent, consistent with the143definition of “use in commerce” (a bona fide use of a mark in the ordinary course of trade, and not merely toreserve a right). The intent requirement requires not only subjective good faith, but also objective evidence ofintent: although the bar is not high, circumstances must indicate that the intent was firm. The Court agreed
with the Board that even though the mark was intended to be used with a “smart” watch, Applicant Berger did
not have a bona fide to use the mark in commerce, evidenced by the facts that it had never made such a watch,
took no steps following the application to develop such a watch; and that there was no nexus between Berger’s
general capacity to produce watches and the capacity required to produce a “smart” watch.
10. Tags① Type of trial

Appeal of opposition decision② Decision

Opposition
denied)③ Type of bad faithFree Ride
Imitation by agents or people who have a prior relationship
Interference by a competing company
Lack of intention to use✓

Others144

decision

upheld(application

【USPTO-9】L'OREAL v. L'OREAL PARIS
1. Title

L'OREAL v. L'OREAL PARIS

2. Country

United States

3. Court

Trademark Trial and Appeal Board

4. Case No.

Opposition No. 91184456

5. Date of the judgment

2012/3/20 [citation: L’Oreal S.A. v. Marcon, 102 USPQ2d 1434 (TTAB 2012)]

6. Parties : Plaintiff

L'Oreal Paris and L'Oreal USA, Inc.

Defendant
7. Mark

Robert Victor Marcon
Plaintiff

Defendant (disputed trademark)

L'OREAL
L'OREAL PARIS
L'OREAL PARIS
8. Outline of the case
Robert Victor Marcon (Applicant) filed for the mark L’OREAL PARIS for aloe vera drinks.
L’Oreal S.A. and L’Oreal USA, Inc. (together Opposer) opposed the application on the basis of likelihood ofconfusion with and dilution of its registered L’OREAL and L’OREAL PARIS marks for cosmetics, and a lack ofintent to use in commerce.
9. Summary of the judgment
The Trademark Trial and Appeal Board (Board) sustained the opposition on the grounds of likelihood ofconfusion and lack of bona fide intent to use the mark in commerce, and decided it therefore was unnecessary to
decide the issue of dilution. With respect to likelihood of confusion, Opposer introduced significant evidence
showing fame of its mark in connection with cosmetics. The Board also considered evidence of bad faith aspart of its likelihood of confusion analysis. The Board found that Applicant has a pattern of filing intent-to-use
applications to register various well-known marks, and that it is highly unlikely that adoption of marks was anunintended coincidence. The Board found that bad faith is strong evidence that confusion is likely, as such aninference is drawn from the imitator’s expectation of confusion.
With regard to lack of bona fide intent to use, Applicant’s lack of documentary evidence or any other objective
evidence that he can/will use the mark, lack of capacity or experience needed to manufacture or otherwise offer
the identified goods, vague allusions to use the mark through licensing or outsourcing, and failure to take any
concrete actions or to develop any concrete plans for use, combined with his pattern of filing intent to use
applications for disparate goods under the well-known marks of others, demonstrates that Applicant lacks therequisite bona fide intent to use his mark in commerce for aloe vera drinks. As a result, the Board sustained the
opposition on likelihood of confusion and lack of bona fide intent to use.

145

10. Tags① Type of trial

Opposition to the registration② Decision

Opposition sustained (application denied)③ Type of bad faithFree Ride✓

Imitation by agents or people who have a prior relationship
Interference by a competing company
Lack of intention to use✓

Others146

【USPTO-10】MISTER SOFTEE(a registered sound mark) v. a sound mark1. Title

MISTER SOFTEE(a registered sound mark) v. a sound mark2. Country

United States

3. Court

United States District Court for the Eastern District of New York

4. Case No.

No. 1:15-cv-04770-SJ-SMG

5. Date of the judgment

2016/6/27[citation:

MisterSoftee,Inc.

v.

Konstantakakos,

No.

1:15-cv-04770-SJ-SMG (E.D.N.Y. June 27, 2016) (unpublished order), objections
overruled via unpublished order (Aug. 11, 2016)]
6. Parties : Plaintiff
Defendant
7. Mark

Mister Softee, Inc. and Mister Softee of Queens, Inc.
Dimitrios Konstantakakos and 3 DDD Ice Inc.
Plaintiff

Defendant

MISTER SOFTEE(a registered sound mark)8. Outline of the case
Plaintiffs Mister Softee, Inc. and Mister Softee of Queens, Inc. (together Plaintiffs) brought this action in the
United States District Court for the Eastern District of New York (Court) under the Lanham Act for trademark
infringement, false designation of origin, and trademark dilution, and common law unfair competition and unfair
trade practice. Plaintiffs allege that defendant Dimitrios Konstantakakos owns 3 DDD Ice Inc. (together
Defendants), which operates an ice cream truck that infringes on plaintiffs' trademark by playing Mister Softee's
jingle, a registered trademark. Plaintiffs seek an award of injunctive relief and attorney's fees.
9. Summary of the judgment
Since Defendants failed to appear or otherwise defend the court action, the Plaintiffs moved for entry of a default
judgment. The Court awarded a default judgment. As noted in the record, Mister Softee owns multiple
registered trademarks, including "Mister Softee" and the Mister Softee musical jingle ("Sonic Mark") that areused in connection with mobile ice cream truck businesses that sell ice cream, frozen desserts, novelties, andother products, and only authorized licensees are permitted to use Mister Softee's trademarks.

Plaintiffs

claimed that the Mister Softee marks have been extensively promoted and are associated in the public mind withplaintiffs' products, and that the Sonic Mark in particular is famous and widely recognized as designating
plaintiffs' products.
The Court found that bad faith has been established by Plaintiffs' unchallenged allegations in the complaint that
Defendants "willfully intended to trade on Mister Softee's reputation," and may also be inferred from
Defendants' intentional copying of Plaintiffs' Sonic Mark. The inference of bad faith is further supported by
Defendants' knowledge of an almost identical trademark infringement suit against the former owner of the147infringing truck. These elements of bad faith, balanced with the similarities in the marks and the goods andservices, led the Court to conclude that Plaintiffs have sufficiently alleged the elements of trademark
infringement and false designation of origin pursuant to the Lanham Act. An injunction was awarded.
Moreover, under the Lanham Act, the court in exceptional cases may award reasonable attorney fees to theprevailing party. 15 U.S.C. §1117(a). Exceptional circumstances include willful infringement, and thus, afinding of willfulness determines the right to attorneys' fees. When a defendant has defaulted, then by virtue ofits default it is deemed to be a willful infringer. Because defendants have defaulted, they were deemed to be
willful infringers, and this case is as a result "exceptional" for the purpose of determining plaintiffs' entitlement
to attorney's fees.
10. Tags① Type of trial

Suit for infringement of a trademark② Decision

Injunction and attorney’s fees awarded③ Type of bad faith ( Free Ride ✓)Free Ride✓

Imitation by agents or people who have a prior relationship
Interference by a competing company
Lack of intention to use
Others148

【USPTO-11】QUIRK and QUIRK WORKS TO SAVE YOU MONEY v. QUIRK and QUIRK AUTO PARK
Daniel J. Quirk, Inc. v. Village Car Co., 120 USPQ2d 1146, 1151

1. Title(TTAB 2016)
2. Country

United States

3. Court/Agency

Trademark Trial and Appeal Board (USPTO)

4. Case No.

Cancellation No. 92057667

5. Date of the judgment

September 27, 2016

6. Parties : Plaintiff

Daniel J. Quirk, Inc.

Defendant
7. Mark

Village Car Co.
Plaintiff

Defendant (disputed trademark)
QUIRK

QUIRK

and
QUIRK WORKS TO SAVE YOU
MONEY

and
QUIRK AUTO PARK

8. Outline of the case
The Trademark Trial and Appeal Board (Board) dismissed a petition for cancellation of registrations for themarks QUIRK and QUIRK AUTO PARK for “automobile dealership” because Daniel J. Quick, Inc. (Petitioner)
failed to prove its claim of fraud on the USPTO.
9. Summary of the judgment
Daniel J. Quick, Inc. (Petitioner) petitioned to cancel registrations for the marks QUIRK and QUIRK AUTOPARK for automobile dealerships owned by Village Car Company (Respondent) on the basis of fraud.
Petitioner claimed that the application oaths in Respondent’s registrations for the marks were executed
fraudulently because Respondent knew of and failed to disclose Petitioner’s allegedly prior superior rights in themarks QUIRK and QUIRK WORKS TO SAVE YOU MONEY for automobile dealerships. The parties agreed
to Accelerated Case Resolution (ACR), where they stipulated that the Board may resolve any genuine issues ofmaterial fact and that the evidentiary record submitted with their cross-motions for summary judgment would
form the trial record.
Fraud in obtaining a trademark registration occurs when an applicant for registration knowingly makes a false,material representation of fact in connection with the application with the intent to deceive the USPTO.

To

prove fraud, the Petitioner has to prove:(1) Petitioner was the user of the same or a confusingly similar mark at the time the oath was signed;(2) Petitioner had legal rights superior to Respondent’s rights at the time Respondent signed the applications forregistration;

149

(3) Respondent knew that Petitioner’s rights in the mark were superior to Respondent’s and either believed that alikelihood of confusion would result from Respondent’s use of its mark or had no basis for believing otherwise;
and that(4) Respondent, in failing to disclose these facts to the USPTO, intended to procure a registration to which it was
not entitled.
Fraud must be proven with clear and convincing evidence. An applicant who holds an honest, good faith belief
in its right to register a mark and signs an application with the statutorily-prescribed ownership statement, whichis phrased in terms of subjective belief, will not be found to have committed fraud. In this case, the Board
found that Petitioner failed to prove that it had superior rights in the mark QUIRK, and thus Petitioner’s fraudclaim failed on this basis.
The Board nevertheless went on to address the question of fraudulent intent. The Board held that even if thePetitioner had superior rights, there was no evidence of fraudulent intent. The Board found that Respondent
believed that Petitioner’s rights were local and limited to southern Massachusetts and therefore had no prior rightto use the mark in interstate commerce, and that even though inaccurate, Respondent’s belief did not amount tofraud. Moreover, the mere act of signing the declaration was not evidence of fraudulent intent, as asserted by
Petitioner. Although Respondent, during prosecution, disclosed its knowledge of Petitioner’s marks to the
USPTO, the Board rejected Petitioner’s contention that this was evidence of deceptive intent. Rather, theBoard held that Respondent’s unprompted disclosure during prosecution as demonstrating the opposite of bad
faith.
Finally, Petitioner claimed that deceptive intent should be inferred from Respondent’s president’s education,
intellect and experience in signing important legal documents, as “he would also be able to appreciate the legal
consequences – and pitfalls – of signing the oaths while withholding personal knowledge of information to thecontrary.” However, the Board held that these facts were, by themselves, insufficient to give rise refused to an
inference of bad faith.
10. Tags① Type of trial

Cancellation Proceeding② Decision

Cancellation dismissed③ Type of bad faith✓Free Ride
Imitation by agents or people who have a prior relationship
Interference by a competing company
Lack of intention to use
Others150

【USPTO-12】SEAL TEAM PHYSICAL TRAINING INC. v. SEAL TEAM or SEALs
In re Seal Team PT Inc., 2016 WL 3679432 (T.T.A.B. 2016)

1. Title(not precedential)
2. Country

United States

3. Court/Agency

Trademark Trial and Appeal Board (USPTO)

4. Case No.

Application Serial No. 86420547

5. Date of the judgment

June 30, 2016

6. Party : Appellant

Seal Team PT Inc.

7. Mark

Appellant (disputed trademark)Defendant

None (ex parte appeal)

8. Outline of the case
The Trademark Trial and Appeal Board (Board) upheld a refusal to register SEAL TEAM PHYSICALTRAINING INC. under Section 2(a) of the Trademark Act for falsely suggesting a connection with elite units of
the United States Department of the Navy known as the SEAL TEAM or SEALs.
9. Summary of the judgment
Seal Team PT Incorporated (Applicant) filed an application for SEAL TEAM PHYSICAL TRAINING INC. for“consulting services in the fields of fitness and exercise; physical fitness instruction.”

The Examining Attorneyrefused the mark under Section 2(a) of the Trademark Act for falsely suggesting a connection with elite units of
the United States Department of the Navy known as SEALs.

Registration was also refused on likelihood ofconfusion with the collective membership mark SEAL for “indicating membership in an organization of
applicant that develops and executes military missions involving special operations strategy, doctrine, andtactics.”

Applicant appealed to the Board.

Section 2(a) prohibits registration of a mark that that may falsely suggest a connection with persons, institutions,beliefs, or national symbols.

“Institutions” include government agencies. The examining attorney must provethat: (1) the mark is the same as, or a close approximation of, the name or identity previously used by anotherperson or institution; (2) the mark would be recognized as such, in that it points uniquely and unmistakably tothat person or institution; (3) the person or institution named by the mark is not connected with the activities
performed by the applicant under the mark; and (4) the fame or reputation of the person or institution is suchthat, when the mark is used with the applicant’s goods or services, a connection with the person or institution
would be presumed.

151

Although Applicant argued that the term “Inc.” signified that it is not a governmental entity and the term “Team”
is a reference to the team-oriented nature of its training program and therefore does not point to the Navy, theBoard found that the addition of matter to the name of an institution does not avoid the commercial impressionthat the mark is a close approximation of the institution. As to the second element, the submission by Applicantof two registrations owned by the same third party which incorporate the term “Seal Team,” was insufficient todefeat the contrary evidence of media coverage showing a unique and unmistakable association of “SEAL Team”
with elite units of the U.S. Navy. The third element was not disputed.
Finally, with regard to the fourth element, the Board considered whether a connection with the U.S. Navy SEALs
would be presumed when Applicant’s mark is used with physical fitness instruction.

Applicant argued thatsince the services were commercial services for the general public, no rational person would believe they werejoining the U.S. Navy SEALS or be training by active duty SEALS. However, the Board stated that was not thefocus of the inquiry for that prong of the test, rather the focus was whether a connection would be presumed.
To that end, Applicant offered physical training using Navy SEAL training methods and had trained individuals
seeking to qualify as Navy SEALs. Applicant’s website states that its founder is a former Navy SEAL, that
Applicant offers Navy SEAL type workouts by trainers who may be former Navy SEALs, and that its members
include current and former members of the military. The Board found that “[g]iven the Navy SEAL outreachand recruitment efforts as well the Navy SEAL website providing the general public with Navy SEAL workouts
and the Navy SEAL Challenge website and Facebook page, the public would assume that the Navy has aninterest in sponsoring, approving, or supporting activity related to physical training services such as Applicant’s
to foster interest in Navy SEALs and from which it might occasionally draw a Navy SEAL candidate.”
Accordingly, the public would presume a connection in that the Navy approves or endorses Applicant’s services.
The Board did not reach likelihood of confusion.
10. Tags① Type of trial

Ex parte appeal of refusal② Decision

Refusal upheld③ Type of bad faith✓Free Ride
Imitation by agents or people who have a prior relationship
Interference by a competing company
Lack of intention to use
Others152

【USPTO-13】SUPERMAN and SUPERWOMAN v. SUPER WOMAN OF REAEL ESTATEDC Comics v. Deanna Rivetti, 2017 WL 3670303 (T.T.A.B. 2017)

1. Title(not precedential)
2. Country

United States

3. Court/Agency

Trademark Trial and Appeal Board (USPTO)

4. Case No.

Opposition No. 91219851

5. Date of the judgment

August 17, 2017

6. Parties : Plaintiff

DC Comics

Defendant
7. Mark

Deanna Rivetti
Plaintiff

Defendant (disputed trademark)SUPER WOMAN OF REALESTATESUPERMAN and SUPERWOMAN
8. Outline of the case
The Trademark Trial and Appeal Board (Board) sustained an opposition filed by D.C. Comics to register
SUPER WOMAN OF REAL ESTATE for real estate procurement for others, holding that the opposed markwould likely dilute D.C. Comics’ famous SUPERMAN, SUPERWOMAN, and Superman’s blue bodysuit
marks with the letter “S” inside a five-sided shield on the chest and a red cape.
9. Summary of the judgment
Deanna Rivetti (Applicant) filed an application to register the mark SUPER WOMAN OF REAL ESTATE for“real estate procurement for others,” disclaiming REAL ESTATE. D.C. Comics (Opposer) filed an opposition
based upon likelihood of confusion and dilution by blurring based on its marks SUPERMAN, SUPERWOMAN
and Superman’s blue bodysuit with the letter “S” inside a five-sided shield on the chest and a red cape for avariety of goods and services, including entertainment, advertising and promotional services and action figures.
To prove dilution a plaintiff must establish:(1) [the plaintiff] owns a famous mark that is distinctive;(2) the defendant is using a mark in commerce that allegedly dilutes the plaintiff’s famous mark;(3) the defendant’s use of its mark began after the plaintiff's mark became famous; and(4) the defendant’s use of its mark is likely to cause dilution by blurring or by tarnishment.
The Applicant conceded that Opposer’s marks were famous and that Applicant commenced use of its mark after
the marks became famous. The second element was met because Applicant based her application on use incommerce.
153Regarding the final prong, under Section 43(c)(B)(i)-(vi) of the Trademark Act, the following non-exhaustive
factors may be considered to determine whether a mark is likely to cause dilution by blurring:(i) The degree of similarity between the mark or trade name and the famous mark;(ii) The degree of inherent or acquired distinctiveness of the famous mark;(iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark;(iv) The degree of recognition of the famous mark;(v) Whether the user of the mark or trade name intended to create an association with the famous mark; and(vi) Any actual association between the mark or trade name and the famous mark.
Although the Board does not usually consider trade dress in assessing likelihood of confusion with regard toword marks, in this case the Board found that “based on the manner in which Applicant used her mark, theoverall similarity of the marks is immediately apparent,” and that Applicant’s mark projects a similar, if not
identical, commercial impression as the Opposer’s marks. The Board also found that Opposer’s marks are
inherently distinctive, there was no evidence in the record of any third-party uses of Opposer’s marks, and that
Opposer’s marks have attracted widespread recognition as a source of Opposer’s goods and services.
With regard to the fifth factor, the Board found that “[c]onsidering applicant’s use of blue bodysuit with theletters ‘SW’ inside a five-sided shield on the chest and a red cape, which are extremely similar to theSUPERMAN indicia, the only possible conclusion that we can reach is that Applicant intended to create an
association with Opposer’s SUPERMAN character and marks.”

Finally, as to whether there had been any

actual association between the marks, ‘“[s]everal times a month since July 2011 ... clients, other agents,
brokers, and prospective clients’ have ‘referred directly or indirectly to Opposer, Opposer’s Superman,
Supergirl or Super Woman characters, or Opposer’s Marks in connection with Applicant’s Mark.’” Based on
its assessment of all of these factors, the Board sustained the opposition on dilution by blurring and did not
decide the remaining claim of likelihood of confusion.
10. Tags① Type of trial

Opposition② Decision

Opposition granted③ Type of bad faith✓Free Ride
Imitation by agents or people who have a prior relationship
Interference by a competing company
Lack of intention to use
Others154

【USPTO-14】TAO v. TAO VODKA
Tao Licensing LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1053

1. Title(TTAB 2017)
2. Country

United States

3. Court/Agency

Trademark Trial and Appeal Board (USPTO)

4. Case No.

Cancellation No. 92057132

5. Date of the judgment

December 7, 2017

6. Parties : Plaintiff

Tao Licensing, LLC

Defendant
7. Mark

Bender Consulting Ltd. d/b/a Asian Pacific Beverages
Plaintiff

Defendant (disputed trademark)TAO

TAO VODKA

8. Outline of the case
The Trademark Trial and Appeal Board (Board) granted a petition to cancel TAO VODKA for alcoholic
beverages excluding beer on the grounds of likelihood of confusion with TAO for restaurant and nightclub
services and due to lack of use of its mark in commerce prior to the deadline for filing the statement of use.
9. Summary of the judgment
Tao Licensing, LLC (Petitioner) petitioned to cancel TAO VODKA for alcoholic beverages on the basis of lackof use of the mark in commerce prior to the deadline for filing a statement of use, likelihood of confusion with
TAO for restaurant and nightclub services, lack of bona fide intent to use, and dilution.

Under Section 45 of the Trademark Act, a trademark is in use when the goods bearing the mark are sold ortransported in commerce. Prior to filing a Statement of Use on April 24, 2012, Bender Consulting Ltd.
(Respondent) had imported and distributed samples of the goods but had not actually sold any goods incommerce. Even though some of the samples were sent to a potential distributor, the Board found that “therecord as a whole reflects that Respondent was not yet using or even ready to use the mark in the ordinary courseof trade, but was merely exploring such use at some point in the future.” The Board concluded that respondent
did not use the mark TAO VODKA in commerce prior to the Statement of Use deadline (September 20, 2012).

The Board considered a number of factors in assessing likelihood of confusion, including the similarities in themarks and relatedness of the goods and services, the fame of the TAO mark, and bad faith on the part of the
Respondent. Prior to filing to register TAO VODKA, Respondent had unsuccessfully approached Petitioner tosell Petitioner Kai Vodka. The Board found bad faith based on: Respondent’s selection and adoption of TAO
155

VODKA for the same product as Kai Vodka after Petitioner declined to purchase Kai Vodka; Respondent’s
adoption of a font very similar to that used by Petitioner; and the nature of the “business proposal” Respondent
made to Petitioner to sell its registration at a high price and to supply petitioner with large volumes of vodka..
Weighing all of the factors, including the finding of bad faith, the Board concluded that confusion was likely.

In the interest of judicial economy, the Board did not reach the remaining claims of lack of bona fide intent to
use the mark or dilution. The Board granted the petition to cancel TAO VODKA for alcoholic beverages on
the grounds of likelihood of confusion with TAO for restaurant and nightclub services and due to lack of use ofits mark in commerce prior to the deadline for filing the statement of use.
10. Tags① Type of trial

Cancellation Proceeding② Decision

Cancelled Registration③ Type of bad faithFree Ride✓

Imitation by agents or people who have a prior relationship✓

Interference by a competing company
Lack of intention to use
Others156

【USPTO-15】BONNIE CASHIN and BONNIE CASHIN FOUNDATION v. BONNIE CASHIN
The Trustees of the Bonnie Cashin Foundation v. Stephanie Day Lake,

1. Title

consolidated with Coach, Inc. v. Stephanie Day Lake, 2016 WL 6777611(T.T.A.B. 2016) (not precedential)
2. Country

United States

3. Court/Agency

Trademark Trial and Appeal Board (USPTO)

4. Case No.

Opposition Nos. 91213081 and 91213082

5. Date of the judgment

October 12, 2016

6. Parties : Plaintiffs

The Trustees of the Bonnie Cashin Foundation, and Coach, Inc.

Defendant
7. Mark

Stephanie Day Lake
Plaintiffs

Defendant (disputed trademark)

BONNIE CASHIN and

BONNIE CASHINBONNIE CASHIN FOUNDATION

8. Outline of the case
The Trademark Trial and Appeal Board (Board) upheld an opposition on the basis of lack of bona fide intent to
use the mark BONNIE CASHIN for backpacks, handbags, umbrellas and clothing.
9. Summary of the judgment
This case involved consolidated opposition proceedings filed by The Trustees of the Bonnie Cashin Foundation,
Lucia Keller and David Baum (“The Foundation”) and Coach, Inc. (collectively “Opposers”) on a variety ofgrounds against the mark BONNIE CASHIN filed by Stephanie Lake (“Applicant”) for backpacks, handbags,
umbrellas and clothing. Bonnie Cashin was the name of an American clothing designer who has since deceased.
Opposers moved for summary judgment arguing that Applicant lacked the necessary bona fide intent to use themark in commerce when she filed her intent to use application under Section 1(b) of the Trademark Act.

(The

motion for summary judgment only moved forward with the Foundation opposition since this ground was not
originally pleaded in Coach’s notice of opposition).
Summary judgment may dispose of a case when there is no genuine dispute as to any material fact, thus leaving
the case to be resolved as a matter of law.

In considering a summary judgment, all evidence must be viewed ina light favorable to the nonmoving party, in this case Applicant.

To prove bona fide intent to use, “[a]napplicant’s bona fide intent to use a mark must reflect an intention that is firm, though it may be contingent on
the outcome of an event (that is, market research or product testing) and must reflect an intention to use the mark“in the ordinary course of trade, … and not … merely to reserve a right in a mark.””157

During discovery, Applicant failed to produce any documents or corroborating evidence to support an intent to
use the mark and admitted that at the time she applied to register the mark she had no concrete plans tocommercialize the goods. Applicant had not finalized a business strategy, decided on specific channels of tradeor volume of the goods to be distributed in commerce, developed product mock-ups, conducted consumer
research or commenced advertising. In fact, Applicant testified in a deposition that her first step towards
launching a brand was filing for the mark. The Board granted the motion for summary judgment on lack ofintent to use and the mark was refused registration.
10. Tags① Type of trial

Opposition Proceeding② Decision

Opposition granted③ Type of bad faithFree Ride
Imitation by agents or people who have a prior relationship
Interference by a competing company✓

Lack of intention to use
Others158

Case Examples of Other Countries/Regions

159

ARGENTINA
ALL BLACKS v. ALL BLACK’S
1. Title

ALL BLACKS v. ALL BLACK’S

2. Country

Argentina

3. Court

Supreme Court

4. Case No.

N-87.XXXIV. Fallos: 324:951

5. Date of the judgment

2001/04/03

6. Parties: Plaintiff

New Zealand Rugby Football Union Inc.

Defendant
7. Mark

Ceballos, Aníbal Germán
Plaintiff

Defendant (disputed trademark)ALL BLACKSALL BLACK’S

8. Outline of the caseA case in which the Defendant’s trademark registration is considered to be unlawful since it was a slavish imitationof the foreign trademark that belonged to a third party.
9. Summary of the judgment
The Court of Appeals partially revoked the first instance decision. The Lower Court declared the Defendant’s
trademark registration for “ALL BLACK’S” to be null and void. The Court of Appeals considered the Plaintiff’s
right to request the nullity to be extinguished since the mark had been registered more than 10 years before thecourt action had been filed.
However, the Court of Appeals confirmed the Lower Court’s decision that rejected the renewal of such mark for“shirts, underwear, socks, footwear and sports gear, manufacturing of natural fur and imitation”. Both the Lower
Court and the Court of Appeals considered that the Defendant could not ignore the existence of the term “ALLBLACKS” and his registration as a trademark was a slavish imitation obtained in bad faith.
The Supreme Court revoked the Court of Appeals decision. The Supreme Court ruled that the “ALL BLACKS” wasa well-known National New Zealand rugby team. Moreover, the Supreme Court mentioned that the rugby sport wasalso well-known in Argentina. Such Supreme Court held that the public would be confused and the Defendant
would obtain a benefit from the fame of the New Zealand’s rugby team. The Supreme Court also statedthat theDefendant’s mark was a slavish imitation of a designation that belonged to a third party. Therefore, the Supreme
160

Court considered that since the registration was obtained in bad faith the corresponding nullity action could notlapse.
10. Tags① Type of trial

Lawsuit for nullity② Decision

Nullity③ Type of bad faith✓Free Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others161

CHRISTIAN DIOR v. CHRISTIAN DIOR
1. Title

CHRISTIAN DIOR v. CHRISTIAN DIOR

2. Country

Argentina

3. Court

Supreme Court

4. Case No.

C-140.XX. Fallos: 310:712

5. Date of the judgment

1987/31/03

6. Parties: Plaintiff

Christian Dior S.A.

Defendant
7. Mark

Mampar S.A.
Plaintiff

Defendant (disputed trademark)

CHRISTIAN DIORCHRISTIAN DIOR

8. Outline of the caseA case in which the Defendant’s trademark application is rejected since it was considered a slavish imitation of theforeign trademark that belonged to a third party.
9. Summary of the judgment
The Court of Appeals confirmed the first instance decision. It considered the opposition filed against the Plaintiff’s
trademark application for CHRISTIAN DIOR in class 11 to be ungrounded. The Court also rejected the
Defendant’s application for CHRISTIAN DIOR in the same class opposed by the Plaintiff. Moreover, the Court ofAppeals ordered the Defendant to cease use of DIOR and CHRISTIAN DIOR for “bathroom screens”.
The Court of Appeals mentioned that the Plaintiff’s mark was well-known and, therefore, the principle of specialty
could not be strictly applicable. The Court of Appeals stated that the Defendant tried to confuse the public whenadvertising the mark in brochures for “bathroom screens”. Said Court also asserted that the Defendant’s application
was a slavish imitation of the Plaintiff’s mark and concluded that the Defendant acted in bad faith.
The Supreme Court confirmed the Court of Appeals decision. The Supreme Court also ruled that it was reasonable
to consider that the trademark law was applicable to situations that involved goods of different classes.
10. Tags① Type of trial

Lawsuit for Ungrounded Opposition /Cease of use② Decision

Rejection of Defendant’s trademark
application / Cease of use③ Type of bad faith

162

✓

Free Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others163

LA VACHE QUI RIT v. LA VACA QUE RIE
1. Title

LA VACHE QUI RIT v. LA VACA QUE RIE

2. Country

Argentina

3. Court

Supreme Court

4. Case No.

Fallos: 253:267

5. Date of the judgment

1962/07/23

6. Parties: Plaintiff

Fromageries Bel Societé Anonyme

Defendant
7. Mark

Ivaldi, Enrique
Plaintiff

Defendant (disputed trademark)LA VACHE QUI RIT (& DESIGN)

8. Outline of the caseA case in which the Defendant’s trademark registration is considered to be unlawful since it was a slavish imitationof the foreign trademark and could take advantage of its prestige.
9. Summary of the judgment
On January 23, 1924 the Plaintiff registered the trademark LA VACHE QUI RIT (& design) (in Spanish LA VACAQUE RIE) in France to protect food products and, in particular, cheese. The foreign trademark featured the same
design of the Defendant’s Argentine registration for LA VACA QUE RIE (& design) granted in 1927 to cover only
“cheese” in class 22. The Plaintiff requested it to be null and void. The Defendant argued that at the time ofregistration he ignored the existence of the Plaintiff and that any possible similarity between the confronted marks
had been by chance.

The Court of First Instance rejected the complaint. The Lower Court held that the prior registration of the foreign
trademark by a third party would make the foreign holder lose their rights. Moreover, the Lower Court mentionedthat the identity or similarity of the marks was not relevant so as to determine the rights of the parties.

The Court of Appeals revoked the First Instance decision. The Court ruled that it would be a miraculous
coincidence that the design of the Defendant’s mark and the sequence of the words were similar to the Plaintiff’smark. Moreover, the Court stated that the Plaintiff was unknown in Argentina and that the Defendant was animportant industrialist who virtually hadn’t used the mark. The Court concluded that the Defendant’s registration
was a slavish imitation and declared the registration to be null and void.

164

The Supreme Court confirmed such decision. It held that the slavish imitation of a foreign trademark which could be
likely to take advantage of its prestige was unlawful.
10. Tags① Type of trial

Lawsuit for Nullity② Decision

Nullity③ Type of bad faith✓Free Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others165

XERODERM v. XERODERM
1. Title

XERODERM v. XERODERM

2. Country

Argentina

3. Court

Division II of the Federal Court of Appeals in Civil and Commercial Matters of theCity of Buenos Aires

4. Case No.

4511/1995

5. Date of the judgment

1999/11/26

6. Parties: Plaintiff

Laboratoires Pharmaceutiques de La Roche Posay

Defendant
7. Mark

Neodermos S.R.L.
Plaintiff

Defendant (disputed trademark)

XERODERMXERODERM

8. Outline of the caseA case in which the Defendant’s trademark application is considered to be unlawful since it was a slavish imitationof the foreign trademark that belonged to a third party.
9. Summary of the judgment
The Plaintiff filed a complaint requesting that the opposition filed against their trademark application for
XERODERM in classes 3 and 5 be declared ungrounded. The Plaintiff also claimed the nullity of the opposing
trademark application for XERODERM in class 3.
The Plaintiff’s mark XERODERM had been used in several European countries for a skin product and had beenregistered in France and WIPO (including Germany, Austria, Benelux, Spain, Italy, Morocco, Portugal and
Switzerland).
The Court of First Instance admitted the complaint and ordered the nullity of the Defendant’s trademark application
for XERODERM. The lower court mentioned that the Defendant’s application was a slavish imitation of theforeign trademark given the fact that it could not ignore its existence.
On appeal, the Federal Court of Appeals confirmed the lower court’s decision. The Court held that XERODERM
was an evocative trademark since it was closely related to the name of a condition (XERODERM XERODERMIA). Moreover, the Court pointed out that the Plaintiff did not prove that XERODERM was a wellknown trademark.

166

However, the Court stated that the Defendant argued that it was a company with knowledge of dermatology
developments. Therefore, the Court of Appeals concluded that it was reasonable to accept that the Defendant
should have known of the existence of the Plaintiff -one of the most important French companies- and their foreign
mark XERODERM.
10. Tags① Type of trial

Lawsuit for ungrounded opposition andnullity② Decision

Nullity③ Type of bad faith✓Free Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others167

ARMENIABUMMY v. BUMMY
1. Title

BUMMY v. BUMMY

2. Country

Armenia

3. Court

Administrative Court

4. Case No.

VD/0455/05/17

5. Date of the judgment

2018/02/19

6. Parties: Plaintiff

Astghik Mkrtchyan

Defendant
7. Mark

Armenian Intellectual Property Agency
Plaintiff (disputed trademark)Defendant

8. Outline of the caseA case in which the court upheld the ex officio refusal of the applicant’s trademark application as filed in bad faith,
because a similar trademark was already in use by a third party outside Armenia.
9. Summary of the judgment
The Plaintiff is an individual who filed the stylized word BUMMY for personal care products in class 3. The
application was refused by the trademark office ex officio, based on an unregistered composite trademark including
the word BUMMY in an identical stylization used by the company Efpoy Tekstil ve Kimya in Turkey for identicalgoods. The website of Efpoy where the mark was advertised was the only evidence of use. Efpoy was not party tothe proceedings. The use was discovered and cited by the examiner of the trademark office. There was no evidence
that the cited mark had ever been used in Armenia or that it was well-known or famous there.

The court dismissed the suit and upheld the refusal, finding that the trademark shall not be registered if it is liable tobe confused with a trademark in use abroad, provided that the applicant was acting in bad faith when she filed theapplication. The action of the applicant is in bad faith if she “knew or could have known” about the existence ofsuch a trademark. The court said that in the current case the applicant had filed a trademark “about the existence of
which [she] could have known by performing a simple search of the trademark to be filed in the Google searchengine”.
10. Tags
168

① Type of trial

Suit against decision of the trademark
office to refuse the application ex officio② Decision

Maintenance of refusal③ Type of bad faith✓Free Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others169

AUSTRALIACLIPSAL v CLIPSO
1. Title

Clipsal Australia Pty Ltd v Clipso Electrical Pty Ltd (No 3)

2. Country

Australia

3. Court

Federal Court of Australia

4. Case No.

[2017] FCA 60

5. Date of judgment

3 February 2017

6. Parties: Applicant

Clipsal Australia Pty Ltd
Clipso Electrical Pty Ltd

Respondent
7. Mark

ApplicantRespondent (disputed trade mark)

CLIPSAL

CLIPSO

8. Outline of the caseA case in which the respondent’s registered trade mark is determined as having been obtained
dishonestly and short of acceptable commercial behaviour, and therefore should be removed fromthe Trade Mark Register.
9. Summary of the judgment
The first use of the Applicant’s trade mark dated back to 1920 when the Applicant’s founderdeveloped an adjustable one-size metal conduit fitting. The CLIPSAL business expanded over timeand an increasing range of electrical accessories were marketed largely under the CLIPSAL mark;sales in 2011 in Australia were more than $500 million.
In around 2005 to 2006, the director of the Respondent set up a business importing electricalaccessory products from China into Australia, under the name HEM Electrical Accessories. The
business was successful. The director decided to begin manufacturing such goods himself (viamanufacturers in China) under the brand ROYO but was unsuccessful in registering that trade
mark; so, in May 2008 he conceived the CLIPSO brand name, giving evidence that this wasformulated as the word ‘clip’ was used frequently in the electrical accessories market, and this was
registered.
Based on evaluation of the facts, it was determined that it was inconceivable that the director could
have remained ignorant of the CLIPSAL brand as the market leader and the evidence of the sourceof the word ‘clip’ was implausible. The CLIPSO mark was registered while fully aware of theexistence of the CLIPSAL trade mark, and the intention was to trade off its reputation to sell the
Respondent’s similar goods. This conduct was dishonest. The behaviour also falls short of170

acceptable commercial behaviour as it was not commercially appropriate to sell competing products
into the market under a very similar name, with the actual intention of misleading consumers into
thinking that they are buying a different product.
10. Tags① Type of trial

Application for cancellation of trade mark② Decision

Cancellation③ Type of bad faith✓Free Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others171

MR CAR KEYS v MR AUTO KEYS
1. Title

Mr Car Keys Pty Ltd v Paul John Jones

2. Country

Australia

3. Court

Australia Trade Marks Office

4. Case No.

[2018] ATMO 52

5. Date of judgment

16 April 2018

6. Parties: Opponent

Mr Car Keys Pty Ltd
Paul John Jones

Applicant
7. Mark

Opponent

Applicant (disputed trade mark)

MR CAR KEYS

MR AUTO KEYS

8. Outline of the caseA case in which the Applicant’s trade mark application is determined as having been filed as part of
conduct that falls short of proper standards as they were aware of the Opponent’s trade mark, andtherefore registration was refused.
9. Summary of the judgment
The Opponent is a specialised automotive locksmith operation that supplies, cuts and programs
keys for almost all makes and models of automobile. It asserts it has been using the trade mark MR
CAR KEYS since November 2009. The Opponent applied to register its trade mark in February
2016, 46 days after the filing date of the Applicant’s disputed trade mark.
Since about December 2015, the Applicant has marketed, advertised, offered for sale and soldencoded automotive keys and automotive locksmith services including services related to the
cutting of replacement encoded automatic automotive keys in Australia, under and by reference to
the Applicant’s disputed trade mark.
Between October 2015 and December 2015, the Applicant utilised the Opponent’s Goods andServices, purchased goods from the Opponent and visited the Opponent’s premises. In visiting the
Opponent’s premises and during interactions with the Opponent’s staff the Applicant was likely tohave been exposed to the MR CAR KEYS logo trade mark. The Applicant was also likely to havebeen exposed to the similar trade mark which appears on the roadside signage, and the large
signage above the door of the premises. Therefore, it was found that the Applicant was aware of the
Opponent’s trade marks as a result of its exposure to those trade marks on invoices and byattendance at the Opponent’s premises and the application was made by a person not adopting
proper standards.

172

10. Tags① Type of trial

Application to oppose registration of trademark② Decision

Registration refused③ Type of bad faithFree Ride
Imitation by agents or people who have a prior ✓relationship
Interference by a competing company
Lack of intention to use
Others173

v
1. Title

Australian Drafting & Design Pty Ltd v Raj Gohil

2. Country

Australia

3. Court

Australia Trade Marks Office

4. Case No.

[2018] ATMO 18

5. Date of judgment

13 February 2018

6. Parties: Opponent

Australian Drafting & Design Pty Ltd
Raj Gohil

Applicant
7. Mark

Opponent

Applicant (disputed trade mark)(unregistered)

8. Outline of the caseA case in which the Applicant’s trade mark application is determined as having been filed aspart of conduct that falls short of proper standards as they were aware of the Opponent’s trademark, and therefore registration was refused.
9. Summary of the judgment
The Opponent runs an agency that provides drafting services, recruitment services, andengineering services. Since 1994 the Opponent has provided its services under the above trademark.
On 17 September 2008 the Applicant executed a sub-contractors agreement with the Opponent
that bore the Applicant’s trade mark. The Opponent’s trade mark appeared on stationery
which the Applicant saw on a regular basis including upon time slips which he completed andreturned to the Opponent. On 23 November 2015 the agreement was terminated for breach on
the basis that the Applicant allegedly had dealt with one of the Opponent’s clients directly.
Two days later, the Applicant applied to register the disputed trade mark.
As the Applicant was a sub-contractor for the Opponent for a period of some eight years andupon the adverse termination of that relationship an application to register a trade marksubstantially identical to the trade mark used by his former employer in relation to services
which are also the ‘same kind of thing’ as those then offered by his former employer was made,174

this is behaviour likely to fall short of the standards of acceptable commercial behaviour
observed by a reasonable and experienced persons.

10. Tags(1) Type of trial

Application to oppose registration of
trade mark(2) Decision

Registration refused(3) Type of bad faithFree Ride
Imitation by agents or people who have a prior ✓relationship
Interference by a competing company
Lack of intention to use
Others175

BEACHES AND BUSH v
1. Title

Beaches and Bush Properties Pty Ltd v Beaches and Bush Properties
Pty Ltd

2. Country

Australia

3. Court

Australia Trade Marks Office

4. Case No.

[2018] ATMO 6

5. Date of judgment

16 January 2018

6. Parties: Opponent

Beaches and Bush Property Pty Ltd
Beaches and Bush Property Pty Ltd

Applicant
7. Mark

Opponent

Applicant (disputed trade mark)BEACHES AND BUSH

8. Outline of the caseA case in which the Applicant’s trade mark application is determined as having been filed in goodfaith as the application was honestly made to protect the Applicant’s rights as appropriate, andtherefore registration was allowed.
9. Summary of the judgment
The Opponent is a real estate agency established in 2000 and based on the South Coast of New
South Wales, Australia. It has used the Opponent’s trade mark since at least October 2000 in
respect of private, commercial and industrial real estate. Its advertisements include regional
television commercials, radio and newspaper advertisements, active website, Facebook page,
Twitter page, Instagram account and LinkedIn account.

The Applicant is a real estate agency based in Queensland, Australia. It has used the disputed
trade mark since March 2014. Its advertisements include social media, active website and third
party real estate websites.

On 2 October 2015 the director of the Opponent telephoned the Applicant to let them know she wasof the belief that the business was trading under the Opponent’s trade mark. On 14 October 2015
the Applicant filed the application for the disputed trade mark.

The evidence was that the Opponent was not aware of the Applicant which was understandable
given the Applicant and Opponent trade in completely different geographical markets. The phone176call alleging infringement and the decision of the Applicant to protect its rights in the disputed
trade mark by seeking registration does not amount to an action that was unscrupulous,underhanded or unconscientious in character, rather it was an appropriate response taken by abusiness that traded under an unregistered trade mark to protect its rights in the mark it had
adopted and traded under.
10. Tags① Type of trial

Application to oppose registration of trademark② Decision

Registration allowed③ Type of bad faithFree Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others✓177

HEMOSTYP v HEMOSTYP
1. Title

Critical Health Products Pty Ltd v Westcoast Surgical and Medical
Supplies Pty Ltd

2. Country

Australia

3. Court

Australia Trade Marks Office

4. Case No.

[2017] ATMO 80

5. Date of judgment
6. Parties: Opponent

2 August 2017
Critical Health Products Pty Ltd
Westcoast Surgical and Medical Supplies Pty Ltd

Applicant
7. Mark

Opponent

Applicant (disputed trade mark)HEMOSTYP (unregistered)

HEMOSTYP

8. Outline of the caseA case in which the Applicant’s trade mark application is determined as having been filed as part of
conduct that falls short of proper standards as they were aware of the Opponent’s trade markthrough a prior business arrangement, and therefore registration was refused.
9. Summary of the judgment
The Opponent is a company established in 2008 that, amongst other things, distributes health careproducts imported from the United States. From late 2012 the Opponent imported and distributeda haemostatic gauze product known as HEMOSTYP. The HEMOSTYP product is produced byUnited Health Products, a company based in Nevada, U.S.A.
In December 2013 the Opponent appointed the Applicant as its exclusive distributor of the
HEMOSTYP product in Australia. This agreement was terminated on 7 April 2015. Shortly after
the Applicant sought to apply to register the disputed trade mark for goods that are the same or thesame kind of thing as the HEMOSTYP product which would have had the practical effect of
creating legal complications for the Opponent seeking to continue to distribute the HEMOSTYP
product.
Although there was no evidence of written distribution agreements between the Applicant and the
Opponent, the evidence establishes that the Applicant was a former distributor of the Opponent’s
HEMOSTYP wound dressing product sold under the HEMOSTYP Trade Mark. A person standing
in the Applicant’s shoes should have known that it should not apply for the registration of a trade
mark deceptively similar to that used by its former business partner and that the Applicant’s
conduct falls short of the standards of acceptable commercial behaviour observed by reasonable and178

experienced persons.
10. Tags① Type of trial

Application to oppose registration of trademark② Decision

Registration refused③ Type of bad faithFree Ride
Imitation by agents or people who have a prior ✓relationship
Interference by a competing company
Lack of intention to use
Others179

AUSTRIA
FEELING v. FEEL
1. Title

FEELING/FEEL

2. Country

Austria

3. Court

Supreme Court

4. Case No.

4Ob98/14m

5. Date of the judgment

2014/09/17

6. Parties: Plaintiff

Not disclosed

Defendant
7. Mark

Not disclosed
Plaintiff (disputed trademark)

FEELING

Defendant (unregistered sign)

FEEL

8. Outline of the caseA case in which the Plaintiff’s registered trademark was registered for the purpose of speculating with it. The
Plaintiff buys and sells trademarks to have them in stock. The Defendant, who sells cars, was first suspected to freeride with a trademark mark only slightly differing from the Plaintiff’s trademark. Plaintiff based his proceedings
against Defendant on such trademark. Defendant filed a counterclaim requesting the invalidation of Plaintiff’s
trademark.
9. Summary of the judgment
The Plaintiff’s trademark FEELING is protected for cars, wheels for cars and wheel rims for cars. The Defendantused the word “FEEL” for advertising a specific car type. Whilst the Plaintiff requested prohibitory injunction of
the use of “FEEL”, since it sounds similar to “FEELING”, the Defendant countered that “FEEL” was descriptive.
Furthermore, the Defendant argued that the registration of “FEELING” was a case of bad faith trademark filingsince the company only speculates with trademarks and cannot prove genuine use of such trademarks.
The court decided that the Defendant used the trademark “FEEL” not in a way that it would be distinctive. In
addition, the court determined that the Plaintiff speculated with (in particular, descriptive) trademarks which havenot been genuinely used. The purpose of a trademark, however, is that it is actually used for goods and services in
the course of business. An indication of speculation with trademarks is the filing of several trademarks without areasonable business model.
The court ruled that the Plaintiff speculated with trademarks, consequently deeming the filings as bad faith filings.

18010. Tags① Type of trial

Counterclaim in infringement proceedings② Decision

Dismissal (infringement proceedings),
Invalidation of trademark (counterclaim)③ Type of bad faithFree Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company✓✓

Lack of intention to use
Others181

Cafe Museum v. CAFÉ MUSEUM
1. Title

CAFÉ MUSEUM

2. Country

Austria

3. Court

Higher Patent and Trademark Senate

4. Case No.

Om 2/12

5. Date of the judgment

2012/03/14

6. Parties: Plaintiff

Not disclosed

Defendant
7. Mark

Not disclosed
Plaintiff (business name)Defendant

Cafe Museum

8. Outline of the case
The Plaintiff let the restaurant “Cafe Museum” to the Defendant on lease. The sign “Café Museum” is considered
to be a well-known sign for the business of the Plaintiff. After the termination of the lease agreement by the
Defendant, the Defendant applied for the trademark CAFÉ MUSEUM & device for goods such as sweets, cakes
and catering for guests. In question was a potential filing in bad faith by the Defendant.
9. Summary of the judgment
The Plaintiff requested cancellation of the trademark CAFÉ MUSEUM & device on the grounds of bad faith filing.
The Higher Patent and Trademark Senate held that the use of the trademark was potentially misleading when it
comes to differentiating between the trademark of the Defendant and the business name of the Plaintiff.
Furthermore, the Defendant allegedly acted in bad faith when he filed the trademark application after having
terminated the lease agreement. The Senate ruled that the Defendant t is filing in bad faith when there is a breach of
loyalty duties. As the trademark application was filed during the termination period of the lease agreement, thoseduties still had to be considered and the Plaintiff would have been obliged to inform the lessor (Plaintiff) of theprospective filing of the same trademark, even if used for different lines of business. Furthermore, the fact that thelease agreement had already been terminated by the Defendant before the filing of the trademark application
indicated the existence of bad faith and allowed for the conclusion that the Defendant wanted to interfere with thePlaintiff’s market position once the lease agreement was terminated.
10. Tags① Type of trial

Suit against decision of patent office forcancellation of a trademark

182

② Decision

Invalidation (Confirmation of decision of
the first instance)③ Type of bad faithFree Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others183✓

BRAZILHIMEDIA v. HIMEDIA
1. Title

HIMEDIA v. HIMEDIA

2. Country

Brazil

3. Court

31ª Federal Court of Rio de Janeiro – Brazil

4. Case No.

0098824-29.2017.4.025101

5. Date of the judgment

2018/6/13

6. Parties: Plaintiff

HIMEDIA LABORATORIES PVT. LTD.

Defendant

BIOSYSTEMS COMÉRCIO IMPORTAÇÃO E EXPORTAÇÃO DE PRODUTOS
PARA LABORATÓRIOS LTDA.

7. Mark

Plaintiff (disputed trademark)Defendant

HIMEDIAHIMEDIA(word mark)(word mark)8. Outline of the caseA case in which the Plaintiff argues that the Defendant registered in bad faith the Plaintiff’s well-known trademark
since the Defendant knew it belonged to the Plaintiff and due to the business relations kept by the parties at the time
the registration was filed.
9. Summary of the judgment
The Plaintiff had a registration for the trademark HIMEDIA since 1998 in India. On 2004, the Plaintiff signed abusiness agreement with the Defendant for commercial representation of its products in Brazil. On September 28,
2004, the Defendant filed a trademark application for HIMEDIA mark in Brazil, without the Plaintiff’s consent,
which was granted by the BPTO.
Therefore, the Plaintiff filed this lawsuit requesting the adjudication of the trademark registration, based on Article
6 bis and septies of the Paris Convention (CUP) as well as Article 166 of the Brazilian Industrial Property Law, anddue to its prior registration for the HIMEDIA trademark in India and the bad faith of the Defendant.
The court ruled in favor of the Plaintiff, alleging that it could be verified that there was commercial bad faith in the
conduct of the Defendant in its act of filing an application for a trademark that, in several other countries, belonged
to the company from which it imported the products identified by the sign and with whom it maintained abusiness relationship based on trust. The court decision said: “Article 166 of the Brazilian Industrial Property
Law and Article 6 septies of the CUP must be applied in this case, in order for the trademark to be adjudicated by its
actual owner”.

18410. Tags① Type of trial

Suit aiming at the adjudication of a
trademark filed in bad faith by a commercial
representative.

② Decision

Adjudication③ Type of bad faithFree Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others185✓

VOGUE v. CAFFE VOGUE
1. Title

VOGUE v. CAFFE VOGUE

2. Country

Brazil

3. Court

1st Specialized Court of the 2nd Federal Court of Appeals– Brazil

4. Case No.

0088731-75.2015.4.02.5101

5. Date of the judgment

2017/10/23

6. Parties: Plaintiff

ADVANCE MAGAZINE PUBLISHERS, INC. and CONDE NAST BRASILHOLDING LTDA.

Defendant

MT CAFÉ LTDA. and the BPTO – INSTITUTO NACIONAL DE PROPRIEDADE
INDUSTRIAL - INPI

7. Mark

Plaintiff (disputed trademark)Defendant(composite mark)(composite mark)8. Outline of the caseA case in which the Plaintiff aimed to nullify the trademark CAFFE VOGUE, granted by the BPTO to the 1st
Defendant. The Plaintiff claims that the Defendant’s trademark reproduces its well-known trademark VOGUE.
9. Summary of the judgment
The 1st instance judge dismissed the action because it found that the Plaintiff had not been able to prove the
Defendant’s bad faith in filing the application for CAFFE VOGUE, since it was filed in a different class, todistinguish restaurant services and, therefore, could not be confused with the Plaintiff’s trademark VOGUE, which
distinguishes magazines.
The Court of Appeals maintained the 1st instance decision. According to them, the Defendant’s trademark CAFFEVOGUE is sufficiently distinct from Plaintiff’s trademark VOGUE, since it has a figurative form completely
different from the Plaintiff’s.
Moreover, the Court found that the Plaintiff had not been able to prove that the trademark VOGUE was wellknown in the food market, only in the fashion and magazines market. Therefore, it is not possible to say that the
Defendant filed its trademark in bad faith, since there is no risk of confusion by the consumers of such trademarks.
10. Tags① Type of trial

Suit aiming to nullify a trademark filed inbad faith by reproducing the well- known
trademark VOGUE.
Trademark maintained② Decision186

③ Type of bad faith✓Free Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others187

TYLENOL v. TYLOL
1. Title

TYLENOL v. TYLOL

2. Country

Brazil

3. Court

2nd Specialized Court of the 2nd Federal Court of Appeals– Brazil

4. Case No.

0102470-52.2014.4.02.5101

5. Date of the judgment

2017/03/27

6. Parties: Plaintiff

JOHNSON & JOHNSON

Defendant

PHARMASCIENCE LABORATÓRIOS LTDA. and the BPTO – INSTITUTONACIONAL DE PROPRIEDADE INDUSTRIAL - INPI

7. Mark

Plaintiff (disputed trademark)Defendant

TYLENOL

TYLOL(word mark)(word mark)8. Outline of the caseA case in which the Plaintiff aimed to nullify the trademark TYLOL, granted by the BPTO to the 1st Defendant.
The Plaintiff claims that the Defendant’s trademark reproduces its famous trademark TYLENOL to distinguish thesame services.
9. Summary of the judgment
The 1st instance judge ruled in favor of the Plaintiff, decreeing the nullity of Defendant’s trademark TYLOL,
considering that the Defendant acted in bad faith, aiming to take advantage of Plaintiff’s trademark fame andprestige when filing a mark similar to the Plaintiff’s that would likely cause confusion among consumers, sinceboth distinguish the same products. In addition, the judge condemned the 1st Defendant to restrain from using thetrademark TYLOL under penalty of a fine of R$ 10.000,00 (ten thousand reais).
The Defendants then filed an Appeal to try to alter the decision and keep its trademark. However, the 2nd specialized
Court of Appeals of the 2nd Federal Court maintained the 1st instance’s decision of nullity of the Defendant’s
trademark TYLOL.
10. Tags① Type of trial

Suit aiming to nullify a trademark filed inbad faith by reproducing the trademark
TYLENOL.
Nullity② Decision③ Type of bad faith✓Free Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others188

DERMYCASE vs. DERMICASE
1. Title

DERMYCASE vs. DERMICASE

2. Country

Brazil

3. Court

São Paulo Court of Appeal - TJSP

4. Case No.

9072285-38.2000.8.26.0000

5. Date of the judgment

April 24th, 2018

6. Parties: Plaintiff

Laboratórios Prima Ltda.

Defendant
7. Mark

Brasterapia Industria Farmacêutica Ltda.
Plaintiff (disputed trademark)Defendant

DERMYCOSE

DERMICOSE

8. Outline of the caseA case in which the applicant of the “Dermycose” trademark filed a lawsuit against the Defendant, requesting thatthe court determine that the Defendant refrain from using the sign “Dermicose” to identify its products as well as becondemned to indemnify the Plaintiff due to the infringement of Plaintiff’s trademark.
9. Summary of the judgment
The Plaintiff argued, especially, that the Defendant is from the pharmaceutical industry and uses a similar sign(“Dermicose”) to identify a similar product. The lower court granted the lawsuit and the judge determined that thePlaintiff refrain from using the mark “Dermicose” and indemnify the Plaintiff in the amount of R $ 111,347.65.
The parties did not agree with this decision and filed an appeal to the São Paulo Court of Appeal. The Defendantrequested for the dismissal of the lawsuit and the Plaintiff requested an increase of the value of the indemnification.
In accordance with the judgment of the lower court, the Court of Appeal upheld the prior decision. Based on theBrazilian Constitution and on the Brazilian Intellectual Property Law, the Court recognized not only that thetrademark owner has the legitimacy to protect it but that it is possible for the applicant to request third parties torefrain from using the mark already filed within the Brazilian PTO in accordance with the principle of anteriority.
In accordance with the Court, the Plaintiff deserved the protection conferred by the Law guaranteeing themaintenance of exclusivity obtained with considerable effort and investment in the market. The Court alsoemphasized that even if the packaging of medicines and its active principles were different, the similarity of thename, varying only from letter “I” through “Y”, obviously created confusion among consumers.
With regard to indemnification, the Court of Appeal established that once infringement of the trademark is proven,189material damages are presumed, as they are a natural consequence of the confusion between the two establishments
and the deviations of clientele. Despite this, the Court of Appeal understood that the value stipulated by the lower
court was in accordance with damages suffered by the Plaintiff, based on an expert’s report.

10. Tags① Type of trial

Trademark Infringement② Decision

Indemnification and Cessation of Use of a
Trademark③ Type of bad faithFree Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use✓

Others190

CANADAIRRESISTIBLES v. IRRESISTIBLES
1. Title

Julia Wine Inc. v. Les marques metro, S.E.N.C.

2. Country

Canada3. Court

Federal Court

4. Case No.

2016 FC 738

5. Date of the judgment

2016/6/30

6. Parties: Plaintiff

Julia Wine Inc.

Defendant
7. Mark

Les marques metro, S.E.N.C.
Plaintiff (disputed trademark)Defendant

IRRESISTIBLESIRRESISTIBLESIRRESISTIBLEIRRESISTIBLES &Design8. Outline of the caseA case in which the Plaintiff’s registration for the “Irresistibles” trademark for use in connection with wines was
opposed by the Defendant as likely to cause confusion with the Defendant’s “Irresistibles” trademarks.
9. Summary of the judgment
The Defendant’s “Irresistibles” mark and its derivatives were known well enough in Canada on the date on which
the statement of opposition was filed on March 7, 2011.
The Defendant had started using a version of its mark around 2002 in connection with various food products andthat decided on the final version, “Irresistibles,” in September 2007. Since then, the Defendant’s mark was used forabout 1100 food products in 370 stores, mainly in Quebec and Ontario, for sales since October 2003 totaling over
$940 million. In addition, since 2011, almost 6.5 million flyers advertising “Irresistibles” products were distributedin Canada.
The Plaintiff argued that wine was a type of ware that was distinct from the Defendant’s products. However, theDefendant’s marks extended to fruit juices, non-alcoholic beverages, sauces, marinades, and the fact that wines
could be considered a natural extension of this range of products marketed by the Defendant could not be excluded.
In addition to filing the “Irresistibles” mark, the Plaintiff also filed multiple registration applications on the sameday, related to other well-known marks in identical or related fields in Canada. The Defendant argued that thePlaintiff was filing applications for the purpose of undermining the Defendant’s rights over its trade-marks, since
the Plaintiff had adopted a modus operandi that consisted of filing registration applications related to well-known

191marks in identical or related fields in Canada.
The Court ruled that the Plaintiff’s attempt to benefit from the established reputation of a significant number ofwell-known marks is the type of situation that the opposition rule aimed to prevent.
10. Tags① Type of trial

Appeal at the Federal Court from a
Decision of the Registrar of Trademarks.

② Decision

Dismissal of Appeal of Trademarks
Opposition Board’s Decision③ Type of bad faith✓Free Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others192

BUGATTI v EB BUGATTI & DESIGN
1. Title

Bugatti International S.A. v Bugatti Hotels & Resorts Ltd.

2. Country

Canada3. Court

Trademarks Opposition Board

4. Case No.

2017 TMOB 60

5. Date of the judgment

2017/5/30

6. Parties: Plaintiff

Bugatti Hotels & Resorts Ltd. (Applicant to the Trademark application) Bugatti

Defendant
7. Mark

International S.A. (Opponent to the Trademark application)
Plaintiff (disputed trademark)Defendant
EB BUGATTI & DESIGNBUGATTI

8. Outline of the caseA case in which the Plaintiff’s registration for the “Bugatti” trademark for use in association with a range of
hospitality and real estate services including hotel services was opposed by the Defendant as likely to cause
confusion with the Defendant’s “Bugatti” trademark.
9. Summary of the judgment
The Defendant is a car manufacturer of vehicles described as the fastest roadsters ever which sell for over $2
million each. The use of the trademark Bugatti has been well established in connection with luxury automobiles,
with media attention in Canadian publications and auto blogs, as well as sales of the automobiles.
The Plaintiff, Bugatti Hotels and Resorts Ltd., is a company based in Toronto (“Bugatti Hotels Toronto”) thatapplied for the trademark “Bugatti” for use in association with a range of hospitality and real estate services
including hotel services and subsequently assigned the trade-mark application to Bugatti Hotels & Resorts Ltd., acompany based in Seychelles (“Bugatti Hotels Seychelles”).
There was evidence illustrating that the Plaintiff found the use of the Bugatti trademark desirable because of the
global fame and reputation of the Bugatti mark as a luxury brand. The Plaintiff intended and expected that its use of
the Bugatti trademark would be perceived and immediately understood by consumers to be the same as the
Defendant’s Bugatti trademark, and as a result the business would enjoy the same cache and goodwill associatedwith the Defendant’s Bugatti trademark. There was also evidence that the Plaintiff had registered numerous domainnames associated with other well-known brands.
The Trademarks Opposition board ruled that the Plaintiff’s application must be rejected as the Plaintiff had applied
for the trademark in bad faith.

19310. Tags① Type of trial

Opposition at the Trademark Opposition
Board
Rejection of Trademark Application② Decision③ Type of bad faith✓Free Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others194

CHILE
ANN TAYLOR v. ANN TAYLOR
1. Title

ANN TAYLOR v. ANN TAYLOR

2. Country

Chile

3. Court

Supreme Court

4. Case No.

Reg. Nº 945761

5. Date of the judgment

2017/09/27

6. Parties: Plaintiff

ANNCO, INC

Defendant
7. Mark

HOLZER Y CÍA. S.A. DE C.V.
Plaintiff

Defendant (disputed trademark)

ANN TAYLOR

ANN TAYLOR

8. Outline of the caseA case in which the Defendant’s registered trademark was obtained by copying a trademark created and positioned
in the market by the Plaintiff.
9. Summary of the judgment
The Plaintiff’s trademark is a well-known and famous trademark in its country of origin (United States).
The trademark ANN TAYLOR was created by the Plaintiff in 1954.
The Plaintiff filed a nullity action based on similarities between the Defendant’s trademark and the Plaintiff’s
alleging that the Defendant had copied his trademark with the purpose of profiting from its fame. According to
ANNCO, INC., the Defendant, Mr. Hozler, legal representative of HOLZER Y CÍA. S.A. DE C.V., contacted
ANNCO, INC. on several opportunities to establish commercial relations, but ANNCO, INC. did not agree. Thisdenial drove the Defendant to register the trademark ANN TAYLOR wherever it wasn’t already registered by its
creator.
The Chilean Trademark Office (INAPI) solved this suit by annulling the registration ANN TAYLOR stating that
the Plaintiff had made clear that: (1) The Plaintiff is the creator of the trademark, (2) It wasn’t a coincidence that the
Defendant chose the words ANN TAYLOR to register the mark, and (3) Maintenance of the trademark registration
would result in consumer confusion.
The decision was appealed by the Defendant, but the Intellectual Property Court of Appeal arrived at the sameconclusion.

195

Finally, the decision was reviewed by the Supreme Court, who decided to confirm the sentence issued by theIntellectual Property Court of Appeal.
10. Tags① Type of trial

Nullity Action Against the Registration of a
Trademark② Decision

Invalidation③ Type of bad faithFree Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others196✓

COLOMBIA
HEXAGON v. HEXAGON
1. Title

HEXAGON v. HEXAGON

2. Country

Colombia

3. Court

Council of State (Contentious Supreme Court)

4. Case No.

11001-03-24-000-2011-00108-00

5. Date of the judgment

2017/12/15

6. Parties: Plaintiff

HEXAGON INDUSTRIAS E COMERCIO DE APARELHOS ORTOPEDICOSLTDADefendant
7. Mark

Superintendence of Industry and Commerce (CTO)
Plaintiff (disputed trademark)Third Party with legal interest

HEXAGON

8. Outline of the caseA case in which a registered trademark in Colombia registered on behalf of a Third Party with legal interest inClass 35 Int., was identical to the Plaintiff’s registered trademark in Brazil, having been obtained contrary to the
ethics of business and good faith, as it was proven that the parties had a business relationship. The registrant (Third
Party with legal interest), was the Plaintiff´s authorized distributor in Colombia when filing the application.
9. Summary of the judgment
HEXAGON INDUSTRIAS E COMERCIO DE APARELHOS ORTOPEDICOS LTDA was the owner of
trademark HEXAGON (Word) in Brazil, and said company contacted the Third Party with legal interest (ZIE
LTDA), in order to reach an agreement and execute a distribution contract in Colombia. The distribution agreement
was sent and signed between said companies on May 16, 2006.
The Third Party with legal interest filed the application for trademark HEXAGON in Colombia withoutauthorization of the Plaintiff for the illicit purpose of free-riding the reputation, honor, and customer appeal
embodied by the Plaintiff’s trademark.
Based on a comprehensive evaluation of these facts, the Council of State recognized that the applicant was awareof the existence of the Plaintiff’s trademark, as the first was the second’s expressly authorized distributor in
Colombia, as evidenced in the distribution agreement signed between said companies on 2006.
The Council of State ordered the CTO annul the Third Party with legal interest´s registration for the trademark
HEXAGON & design No. 386993 in Class 35 Int.

197

10. Tags
Suit against decision for trial forinvalidation
Invalidation① Type of trial② Decision③ Type of bad faith✓Free Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others198✓

GS OIL v. GS OIL
1. Title

GS OIL v. GS OIL

2. Country

Colombia

3. Court/authority

Superintendence of Industry and Commerce (CTO)

4. Case No.

14194773

5. Date of the judgment:

Resolution No. 93911 dated 2015/11/30

6. Parties: Plaintiff

GS HOLDING CORP

Defendant
7. Mark

REGIRDOS S.A.S
Plaintiff (disputed trademark)Defendant

GS HOLDING CORP

REGIRDOS S.A.S

8. Outline of the caseA case in which the Defendant’s trademark filed in Colombia, in Classes 4, 35 and 37 Int., was confusingly similar
to the Plaintiff’s registered trademark in Peru, having been filed contrary to ethics of business and good faith, as it
was proved that the parties had a business relationship. (The Defendant was the authorized distributor of thePlaintiff in Colombia).
9. Summary of the judgment
The Defendant filed the application for Trademark GS OIL without authorization of the Plaintiff on September 4th,
2014, for the illicit purpose of free-riding the reputation, honor, and customer appeal embodied by the Plaintiff’s
trademark, and the Plaintiff filed an Andean opposition based on its Peruvian registration for trademark GS &Design and simultaneously filing an application for the identical trademark in Colombian in order to demonstratereal interest in the Colombian market.
Based on a comprehensive evaluation of these facts, it was recognized that the applicant was aware of the existenceof the Plaintiff’s trademark, as the first was its distributor expressly authorized in Colombia, as evidenced in the
distribution certificates issued by the Plaintiff on January 13, 2013.

The CTO acknowledged the Defendant’s bad faith and rejected the trademark registration GS OIL in Classes 4, 35,
37 Int.
10. Tags① Type of trial lSuit against decision for trial for invalidation② Decision

Invalidation

199

③ Type of bad faith✓Free Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others200

KLAYSA v. LAY´S
1. Title

KLAYSA v. LAY´S

2. Country

Colombia

3. Court

Council of State (Contentious Supreme Court)

4. Case No.

11001-03-24-000-2013-00126-00

5. Date of the judgment

2016/05/12

6. Parties: Plaintiff

PEPSICO., INC

Defendant
7. Mark

Superintendence of Industry and Commerce (CTO)
Plaintiff (disputed trademark)Third Party with legal interest

LAY´S

KLAYSA

8. Outline of the caseA case in which the trademark in Colombia, in Class 29 Int., on behalf of the Third Party with legal interest´s, wasconfusingly similar to the Plaintiff’s registered trademark in Colombia having been obtained contrary to ethics ofbusiness and good faith, in agreement with Article 136 literal a) Decision 486/2000.
9. Summary of the judgment
The Plaintiff filed a timely opposition against the Defendant´s application, based on the aforementioned legal
provisions.
In the administrative instance, the CTO concluded that the application on behalf of the Third Party with legal
interest, was not confusingly similar to the marks previously registered by the Plaintiff with respect to the same
goods and decided to grant the Defendant´s application.
The Plaintiff filed a Nullity Claim before the Council of State against the Resolutions that granted trademark
KLAYSA on behalf of the Third Party with legal interest.

Based on a comprehensive evaluation of these facts, the Council of State ratified the CTO´s decision, mainly
arguing that there was no risk of confusion between the subject trademarks, and that the bad faith of the Defendant
when filing the application, also alleged by the Plaintiff, was not proved by the later.
10. Tags① Type of trial lSuit against decision of trial for invalidation② Decision

Invalidation201

③ Type of bad faithFree Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use✓

Others202

COSTA RICA
Tim Hortons v. Tim Hortons
1. Title

Tim Hortons v. Tim Hortons

2. Country

Costa Rica

3. Court

Administrative Registry Court

4. Case No.

2014-0318-TRA-PI

5. Date of the judgment

2015/1/13

6. Parties: Plaintiff

TIM HORTONS INTERNATIONAL S.A

Defendant
7. Mark

Jenny Reyes DuranPlaintiff

Defendant (disputed trademark)8. Outline of the caseA case in which the Defendant was seeking registration for a trademark. An opposition was filed by
the Plaintiff based on non-registered trademarks. The opposition was rejected by the Trademark Office, but theAdministrative Registry Court ruled that the Defendant’s trademark was well-known and therefore, the application
was filed in bad faith.
9. Summary of the judgment
The Defendant filed an application for the trademark TIM HORTONS to protect in class 43 “Services for providing
food and drink; temporary accommodation”. The application was approved by substantive examination and its
notice of publication was published on the Official Gazette.
During the period for oppositions, TIM HORTONS INTERNATIONAL S.A. filed an opposition based on nonregistered trademarks. This process enables an opponent to file an opposition even though they do not have aregistered trademark in Costa Rica, if a) the trademark is currently in use in the country, and b) there is an identicalor confusingly similar well-known, famous trademark.
The TMO rejected the opposition as they do not consider the trademark TIM HORTONS is well-known in Costa
Rica. Against this resolution, the Plaintiff filed an appeal at the Administrative Registry Court.
With the evidence filed, including trademark certificates in different countries, photos, articles, international
declarations of notoriety, the Administrative Registry Court concluded that the TIM HORTONS trademark isfamous, and considering that the trademark applied is exactly identical, the application was filed in bad faith.

20310. Tags① Type of trial

Opposition Against Decision of Trademarks
OfficeRejection of Trademark Application Due to
Bad Faith② Decision③ Type of bad faith✓Free Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others204

DESIGUAL v. DESIGUAL
1. Title

DESIGUAL v. DESIGUAL

2. Country

Costa Rica

3. Court

Administrative Registry Court

4. Case No.

2010-0909-TRA-PI

5. Date of thejudgment
6. Parties: Plaintiff

2012/1/19
INTS IT IS NOT THE SAME, GMBH
Angulo Opuesto S.A.

Defendant
7. Mark

Plaintiff

Defendant (disputed trademark)8. Outline of the caseA case in which the Defendant was the holder of a trade name registration for DESIGUAL, and the Plaintiff filed a
trademark application for DESIGUAL in class 25 along with a nullity action against the trademark registration of
the Defendant. The Trademark Office ruled that the trademark DESIGUAL was not well-known in Costa Rica, andtherefore, rejected the nullity action. The Administrative Registry Court reverted this decision.
9. Summary of the judgment
The Defendant had a registration for the trade nameto protect “a commercial establishment

dedicated to the commercial activity of shoe stores, that is to say the sale of shoes, boots, men’s shoes, women’s
shoes and children’s shoes”.

INTS IT IS NOT THE SAME, GMBH filed a trademark application forin class 25 for “garments

made for women, men and children; footwear; millinery”, along with a nullity action against this trademark
registration, alleging

is a famous trademark, and as such, it must be protected. The Trademark Office

rejected this nullity action and considered there was no sufficient proof that the trademark is well-known.

Against this resolution of the TMO, the Plaintiff filed an appeal at the Administrative Registry Court, which ruled
that

the

Plaintiff

name

was

right,

thetrademarkis well-known and although the trade

was in use in Costa Rica for several years, the notoriety of the trademark

took precedence.
10. Tags

205

① Type of trial

Nullity Against Trademark Registration② Decision

Nullity Confirmed③ Type of bad faith✓Free Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others206

CUBA
BLUETOOTH vs BLUETOOTH
1. Title

BLUETOOTH vs BLUETOOTH

2. CountryCuba

3. Court

Cuban Intellectual Property Office

4. Case No.

2015-1396 (no. of the application file)

5. Date of the judgment

2017/12/28

6. Parties: Plaintiff

Bluetooth SIG, Inc.

Defendant
7. Mark

International IP Holdings, LLC
Plaintiff (disputed trademark)

BLUETOOTH

Defendant

BLUETOOTH

8. Outline of the case
An opposition against the filing of a famous and well-known trademark worldwide whose recognition in Cuba could
be under question given the US embargo on trade with Cuba.
9. Summary of the judgment
Under consideration was the notion that BLUETOOTH was a well-known trademark in other countries fortelecommunication services, in particular for wireless technologies. The opponent’s evidence of its well-known
character were considered to try to demonstrate its well-known character locally for telecommunications services
and for users of mobile phones and electronic devices. It was highlighted that the mark has presence in Cuba
through devices imported to the country and the number of users of those devices and through documents of thesole telecommunications company of Cuba, all of which were considered to have contributed to a degree ofawareness and notoriety at a local level.

Due to the similarity of the signs, it was likely that there was a risk of association between the signs, regardless ofwhether the Plaintiff had any presence in Cuba.

The bad faith claim was rejected on autonomous grounds since, according to Cuban Law, it was a ground for nullity(as it goes against registered marks) and not for opposition (which would imply an expectation of a right, instead ofa right per se).

207

Having said this, the applicant filed 23 trademarks for different goods and services, all of which were registered orused abroad by different owners and some are well-known trademarks within the relevant sectors in othercountries. 17 of the 23 applications (74%) received oppositions filed by third parties on a similar basis. Further
research showed that the applicant did not have trademark rights using those signs nor had it performed activities
under those trademarks in other countries. These facts together with the well-known character of BLUETOOTH in
the relevant sector led to the conclusion that there was “imitation and taking unfair advantage of the reputation” ofthe opponent, and that the filings were made “to facilitate, in an evident manner, an act of unfair competition” asthey were intended to cause confusion among the target audience and to obtain exclusive rights for trademarks
which could not be subject to a real and effective use at a national level.
10. Tags① Type of trial

Opposition② Decision

Opposition (Cuban PTO)

③ Type of bad faith✓Free Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others208

ECUADOR
MARC JACOBS vs MARC JACOBS
1. Title

MARC JACOBS vs MARC JACOBS MAS LOGOTIPO

2. Country

Ecuador3. Court

Ecuadorian PTO

4. Case No.

Iepi-2017-30829

5. Date of the judgment

2018/01/09

6. Parties: Plaintiff

MARC JACOBS TRADEMARKS LLC

Defendant
7. Mark

YANG SURONG
Plaintiff (disputed trademark)Defendant

MARC JACOBS

8. Outline of the case
MARC JACOBS TRADEMARKS LLC filed an Andean opposition against the registration of their trademark
MARC JACOBS on behalf of a third party.
9. Summary of the judgment
The Plaintiff’s trademark is a well-known luxury clothing and accessories trademark. Despite the fact that thetrademark MARC JACOBS was not registered in Ecuador, the Ecuadorian PTO recognized MARC JACOBS
TRADEMARKS LLC previous rights in another Andean country. The Authority considered that the trademark
filed by YANG SURONG is identical to the famous luxury brand MARC JACOBS.
The trademark was denied on the basis that Andean law prohibits the registration of a trademark that may cause
confusion among consumers. This resolution is an important precedent by which the Ecuadorian PTO recognized
the rights of Marc Jacobs Trademarks LLC even though the trademark was not registered or used in Ecuador.

10. Tags① Type of trial

Andean Opposition② Decision

Registration Denial③ Type of bad faithFree Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company

209

Lack of intention to use✓

Others210

FINLAND
Humsecgrid v. HUMSECGRID
1. Title

HUMSECGRID

2. Country

Finland

3. Court

Supreme Administrative Court of Finland

4. Case No.

KHO:2017:155

5. Date of the judgment

2017/10/11

6. Parties: Plaintiff

Kuopio Innovation Oy

Defendant
7. Mark

not disclosed
Plaintiff (disputed trademark)Defendant

Humsecgrid

HUMSECGRID(abbreviation for Human Security Grid)

8. Outline of the caseA case in which the Defendant’s trademark was found to have been filed in bad faith due to the Defendant's
knowledge of and previous involvement with the Plaintiff's project of the same name.
9. Summary of the judgment
On October 11, 2017, the Supreme Administrative Court of Finland (the Court) handed down judgment
KHO:2017:155, in which it confirmed Market Court decision no. 502/15, July 14, 2017, holding that Kuopio
Innovation Oy may oppose the (undisclosed) Defendant’s registration of the trademark HUMSECGRID on the
grounds of bad faith under Section 14(1).7 of the Finnish Trademarks Act.

In 2012, the Defendant registered the Finnish trademark HUMSECGRID in Classes 41, 42, and 45. Kuopio
Innovation Oy claimed that it had been filed in bad faith as the Defendant had been involved in a project called
Humsecgrid (abbreviation for Human Security Grid) in which the trademark was developed in co-operation withother participants of the project and used in events related to the project.

The Court stated in accordance with a decision by the General Court of the European Union (SA.PAR. v. OHIM Salini Costruttori (GRUPPO SALINI), T-321/10, para. 28, July 11, 2013) that “in order to assess whether or not a
trademark applicant acted in bad faith, it is necessary to examine the intentions of the applicant such as they may beinferred from objective circumstances and from his specific actions, from his role or position, from the awarenesshe possessed of the use of the earlier sign.”

211

In line with a decision of the Court of Justice of the European Union (CJEU) (Verein Radetzky-Orden, C-442/07,
paras. 16, 22, 24, Dec. 9, 2008), the Court found that the fact that Kuopio Innovation Oy was a nonprofit association
was immaterial in the assessment of whether its use of the mark constituted trademark use.

The Court also referred to another decision of the CJEU (Chocoladenfabriken Lindt & Sprüngli, C-529/07, para.
34, June 11, 2009) stating that filing a trademark in bad faith is an absolute ground for refusal. Thus, it was
immaterial whether Kuopio Innovation Oy’s claims were based on its own prior use or the prior use of a third party.

Furthermore, the Court found that the provision may apply even if the earlier mark is not established in the market.
Therefore, the Court concluded that the Defendant had filed the trademark in bad faith and that the trademark
registration would therefore be revoked.

The judgment diverges from judgment KHO:2010:75 of November 3, 2010, in which the Court held that a party
must base its claims on its own prior use.

10. Tags① Type of trial

Bad Faith as an Absolute Ground for
Refusal of Trademark Registration
Opposition② Decision③ Type of bad faithFree Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others212✓

FRANCEIT COSMETICS v. IT COSMETIQUE
1. Title

IT Cosmetics

2. Country

France3. Court

Tribunal de Grande Instance de Paris

4. Case No.

16/17537

5. Date of the judgment

23/02/2018

6. Parties: Plaintiff

L’Oreal SA

Defendant
7. Mark

Guinot SAS
Plaintiff

Defendant (disputed trademarks)
IT COSMETICS

IT BEAUTE

IT PARFUM

IT SKIN

IT COSMETIQUE
IT BEAUTY
8. Outline of the caseGuinot SAS (Applicant) filed for the disputed marks for perfumes and cosmetics.
L’Oreal S.A. opposed the application on the basis of likelihood of confusion with and dilution of its registered IT,
IT COSMETICS, IT SKIN and IT BEAUTY marks for cosmetics, and a lack of intent to use in commerce.
9. Summary of the judgment
The Plaintiff’s trademarks are constituted by the wording “IT” paired with generic terms such as“COSMETICS” and “BEAUTY” which have been acquired by the Plaintiff together with the acquisition of thestcompany IT COSMETICS on September 1 2016.
The disputed trademarks are constituted by the combination of the word “IT” together with “BEAUTE”,“PARFUM” and “COSMETIQUE” which are the French translation of the terms incorporated in the Plaintiff’sththtrademarks and had been registered between the 26 and the 28 of July 2016, shortly after the announcement of
the abovementioned acquisition.

The Defendant is a famous multinational company engaged in the global manufacturing and sale of cosmetics
and beauty products as well as perfumes.

213

Based on the fact the Defendant operates in the same industry as the Plaintiff and on the wide publicity of theacquisition that L’Oreal has engaged, the Plaintiff could not have ignored this acquisition and as a consequencethat L’Oreal would be exploiting the trademark “IT COSMETICS” from the acquisition date onwards.
Moreover, the Defendant had not been able to prove any reason why he would have registered the disputed
trademarks. For this reason, the Defendant’s trademarks were judged as registered in bad faith.
10. Tags① Type of trial

Cancellation Proceedings / Invalidity
Action② Decision

Invalidation③ Type of bad faith✓Free Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others214

Pigeon proper v. clean pigeon
1. Title

Pigeon proper v. clean pigeon

2. Country

France3. Court

Tribunal de Grande Instance de Paris

4. Case No.

15/14028

5. Date of the judgment

15/09/2016

6. Parties: Plaintiff

Pigeon Propre SARL Clean

Defendant
7. Mark

Pigeon SARL
Plaintiff

Defendant (disputed trademark)8. Outline of the case
Clean Pigeon SARL filed an application for the disputed trademark for goods against winged animals.
Pigeon Propre SARL opposed the application on the basis of likelihood of confusion with its registered trademark“PIGEON PROPRE” for the same goods, claiming the non-ignorance of Clean Pigeon SARL at the time of
application.
9. Summary of the judgment
Pigeon Propre SARL is a company specialized in the development and commercialization of anti-winged animal
products since 1996 and owns the “PIGEON PROPRE” trademark since 2014.
S.T. had been an employee of Pigeon Propre SARL from 1999 to 2007 before leaving it and creating company
Clean Pigeon SARL in 2011 which specialized in the same sector in which Pigeon Propre SARL operates. S.T.
registered during the same year, in the name of Clean Pigeon SARL, the disputed trademark for anti-winged animal
goods.
Based on the long-standing working relationship between S.T. and Pigeon Propre SARL, the latter claims that S.T.
could not have ignored the usage of the company’s name as an unregistered trademark and therefore that S.T. hadregistered the trademark “CLEAN PIGEON” in bad faith, taking advantage of Pigeon Propre’s reputation.
The Court rejected the claim of Pigeon Propre SARL on the ground that the longstanding working relationshipbetween Pigeon Propre SARL and Clean Pigeon, through its founder, does not prove that the latter had applied215

for the disputed trademark in bad faith. Indeed, no proof has been brought by Pigeon Propre SARL that the
disputed trademark had been registered with the purpose of effectively hindering its commercial activity,
independently from the existence of a prior trademark right. The Court validated the disputed trademark on the
ground that there was no proof showing that Clean Pigeon SARL registered the trademark for purposes other thanlegitimate use.
10. Tags① Type of trial

Infringement Action② Decision

Validation③ Type of bad faithFree Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others216✓

Parnasse v. Parnassea
1. Title

Parnasse v. Parnassea

2. Country

France3. Court

Tribunal de Grande Instance de Paris

4. Case No.

15/02897

5. Date of the judgment

31/03/2016

6. Parties: Plaintiff

Société Parisienne De Parfums Et De Cosmetiques SAS

Defendant
7. Mark

Louis Vuitton Malletier SA
Plaintiff

Defendant (disputed trademarks)
LOUIS VUITTON PARNASSEAPARNASSE
PARNASSEA

8. Outline of the caseLouis Vuitton Malletier’s application for the disputed trademark was deemed in good faith as its only purpose wasto launch new products under this name and not to damage Société Parisienne de Parfums Et De Cosmetiques(SPPC) nor any other competitor.
9. Summary of the judgment
SPPC owns the “PARNASSE” trademark for goods in classes 3, 18 and 25 including leather products since 1994.
The “PARNASSE” trademark had, however, been used only for a few seasons and abandoned afterwards until
2012.

Louis Vuitton Malletier had sent a letter to SPPC in May 2013 informing them about their interest in buying the“PARNASSE” trademark and about their awareness that the trademark had been abandoned. For this reason, Louis
Vuitton Malletier was ready to engage in legal action to pronounce annulation of the trademark. The day after
sending, Louis Vuitton Malletier filed an application for the disputed trademarks for leather goods.

SPPC took Louis Vuitton Malletier to Court claiming bad faith of the disputed trademark on the grounds that thelatter was aware of the existence of the prior mark, but knowingly ignored it. Based on extensive proof submitted
by Louis Vuitton Malletier showing that the disputed trademarks had been used to market a new bag collection in
May 2013, the Court validated the disputed trademark on the grounds that they had been registered with the
purpose of identifying the products of the new collection. Thus, the trademark application could not be considered
as filed in bad faith.
10. Tags① Type of trial

Infringement Action② Decision

Validation217

③ Type of bad faithFree Ride
Imitation by agents or people who have a prior relationship
Interference by a competing company
Lack of intention to use✓

Others218

GERMANY
Glückspilz (“Lucky Devil”/”Lucky Dog”)
1. Title

Glückspilz (“Lucky Devil”/”Lucky Dog”)

2. Country

Germany

3. Court

Bundesgerichtshof (Federal Court of Justice)

4. Case No.

I ZB 69/14

5. Date of the judgment

15 October 2015

6. Parties: Plaintiff

N.N.

Defendant
7. MarkN.N.
Appellant

Defendant/OwnerGLÜCKSPILZ

8. Outline of the case
The Bundesgerichtshof found that the relevant point in time at which bad faith must be established for refusal of a
trademark’s registration or later cancellation is not the date of the registration of a trademark, but that of the
trademark’s application.
Furthermore, enforcing claims based on a registered trademark before courts only against decorative uses of themark is, without further evidence, not sufficient to indicate lack of intention to use the trademark properly.
9. Summary of the judgment
The Defendant was an owner of the registered word mark “GLÜCKSPILZ” with respect to goods in Nice classes
18, 21 und 25. The term “Glückspilz” means “lucky dog” or “lucky devil” and is thus a very common and oft-usedterm in general in the German language in humorous as well as in in serious contexts.

The appellant requested cancellation of the trademark claiming that the application had been filed in bad faith. The
Federal Patent Court found in favor of the appellant. One indication of bad faith was that the Defendant had
registered various word marks with equally common terms, such as “Lucky Devil” without using them as
trademarks. Furthermore, the Defendant had approached competitors using the term “Glückspilz” as decorative
embellishments on floor mats with cease and desist letters to enforce its alleged rights before courts. Finally, theDefendant had not established that it intended to use the registered mark for proper trademark purposes in the
future. These clues showed that the only intention of the Defendant was to improperly use an exclusive barrier
effect against competitors who used the sign for embellishments.
The Bundesgerichtshof annulled the decision and returned the matter to the Federal Patent Court.

219

The Federal Patent Court had rightly assessed the matter insofar as it focused on the date of the trademark’s
application, not the date of its registration. Thus, the Bundesgerichtshof overturned its own set of case law, which,until this decision (cf decision of 2 April 2009, Case I ZB 8/06), had found the date of the decision on registration
was the relevant date to assess evidence as to whether the trademark application was made in bad faith.

The Bundesgerichtshof did not, however, concur with the rest of the reasoning put forth by the Federal Patent
Court. The German Patent and Trademark Office and the Federal Patent Court should have made less sweeping
observations and statements relating to the Defendant using the trademark as a decorative embellishment rather
than as a trademark in a proper way. Furthermore, the office and the court had not considered additional contentions
by the Defendant referring to other forms of use. Therefore the evidence was considered insufficient to establish
lack of intention to use at the time of the application of the trademark.
Additionally, the behavior of the Defendant did not indicate that it’s only intention at the time of the trademark
application was to improperly use an exclusive barrier effect of the trademark against its competitors. Enforcing
rights against competitors using a trademark in a decorative way rather than as a trademark may not be successful
but would not indicate improper intention without additional evidence. The fact that the Defendant had registeredvarious common terms equal to “Glückspilz” was also not sufficient evidence to indicate the Defendant was
pursuing improper intent by registering the trademark in question.

10. Tags① Type of trial

Appeal Before the Bundesgerichtshof
Against a Decision by the Federal Patent
Court
Appeal Allowed and the Matter was
Returned to the Federal Patent Court for
Further Trial② Decision③ Type of bad faithFree Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use✓

Others220

Hop on Hop off
1. Title

Hop on Hop off

2. Country

Germany

3. Court

Federal Patent Court

4. Case No.

26 W (pat) 64/08

5. Date of the judgment

12 November 2012

6. Parties: Appellant

N.N.
Cancellation Procedure, Appeal Against Cancellation.

7. Mark

Cancellation Applicant

Trademark Owner

Hop on, Hop off

8. Outline of the case
The Federal Patent Court found that the trademark owner had filed the trademark in question primarily to use theexclusive barrier effect to block competitors. Given this background, it would, in this specific case, not be relevantthat the trademark owner intended to use the trademark for trademark purposes.
9. Summary of the judgment
The trademark owner registered the trademark “Hop on, hop off” for “city tours” and “sightseeing tours”. At thetime of the application, however, he was fully aware of the fact that the slogan was already used by sightseeing tour
providers in Berlin (and apparently also in Sweden, though irrelevant for the German trademark) for a particularsystem of city tours. The German Patent and Trademark Office cancelled the trademark on grounds of bad faithbecause it found that the trademark owner only sought trademark protection of the slogan to use the trademark notjust as the designation of its services, but first and foremost as an improper means of competing by obtaining an
injunction based on the registered trademarked in order to push competitors out.

The Federal Patent Court upheld the cancellation decision by the German Patent and Trademark Office. The court
found that the trademark owner at the time of the application of its trademark knew that another provider of city
tours intended to use the already known slogan “Hop on, hop off” for city tours in Cologne. The trademark owner
had already tried to prevent, without success, a business license being issued to the competitor by the district
administration of Cologne. This and the fact that the trademark owner approached the competitor and filed for an
injunction two months after its registration sufficed to show that the predominant motivation for obtaining thetrademark right had been to eliminate the competitor from the market and not the use as a designation of its own
services. Therefore, even in cases where a trademark owner successfully proves its intention to properly use a
trademark, the trademark may still be cancelled by the trademark authorities and/or courts if other anti-competitive
motives prevail.

221

10. Tags① Type of trial

Appeal Before the Federal Patent Court
Against a Decision by the German Patent
and Trademark Office② Decision

Cancellation Decision Upheld③ Type of bad faithFree Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others222✓

AKADEMIKS v. AKADEMIKS
1. Title

AKADEMIKS

2. Country

Germany

3. Court

Federal Court of Justice

4. Case No.

I ZR 38/05

5. Date of the judgment

2008/01/10

6. Parties: Plaintiff
Defendant
7. Mark

Plaintiff

Defendant (disputed trademark)

AKADEMIKSAKADEMIKS

8. Outline of the caseA case in which the Defendant’s registered trademark was determined to have been registered in Germany to hinder
the use and registration of a trademark previously registered in the USA.
9. Summary of the judgment
The Plaintiff operates in the segment “Urban Street Wear” and in particular manufactures and sells “Hip Hop
Fashion”. The Plaintiff registered its first trademark containing “AKADEMIKS” for clothing items on 1999/06/04
in the USA. After their launch in the USA in Spring 2000, the goods sold under the Defendant’s trademark very
successfully. Subsequently, various trademarks were registered with the OHIM in 2002 and in 2003 with theGerman Patent and Trademark Office.

The Defendant registered the disputed trademark for clothing items, shoe wear and headgear on 2000/10/18 inGermany.

The Plaintiff argued that the trademark in Germany was registered in bad faith because the Defendant should have
known that the Plaintiff planned to use the trademark in Germany and because the Defendant also imitated thecharacteristics of the goods.
The result was that the Defendant knew of the Plaintiff’s trademark when registering the disputed trademark
because they both operated in a market which focuses on developments in the US market. The Defendant also
should have anticipated that the Plaintiff planned to operate in the German market with the trademark in the near
future. This is because, typically, fashion companies successful in the US will be marketed in Germany soon223

after this success and because companies normally try to establish themselves in their domestic market before
going abroad. The Plaintiff’s trademark was particularly successful and became known to experts outside of theUS, which is why a launch in Germany was expected.

10. Tags① Type of trial

Main Injunction Proceedings② Decision

Cancellation, Injunction③ Type of bad faithFree Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others224✓

HONG KONG
v. Mastercard
1. Title

易聯支付科技有限公司 v. Mastercard

2. Country

Hong Kong

3. Court
4. Case No.

302230190

5. Date of the judgment

17 December 2017

6. Parties: Plaintiff

易聯支付科技有限公司

Defendant
7. Markth

MASTERCARD INTERNATIONAL INCORPORATED
Plaintiff (disputed trademark)Defendant

8. Outline of the caseOn 23 April, 2012 易聯支付科技有限公司 (the Applicant) filed an application (“the subject application”) under
the Trademarks Ordinance (“the Ordinance”) for the registration of the mark “Payeco”. Although the subject markis represented in blue and orange colors, there is no color claim in the subject application. So the distinctiveness ofthe subject mark did not depend on a particular color scheme. Registration was sought in respect of “Financial
services” for class 36, “Providing telecommunications equipment (including mobile phones, telephones) for
confirming payment transactions” in class 38, and “Providing design and development of computer hardware andsoftware for supporting applications by financial service institutions” for class 42.
9. Summary of the judgment
The subject application, the Notice of Opposition and the Counter-statement were all filed in Chinese. Pursuant to a
joint request by the parties, the Registrar gave the direction that the language of the proceedings change from
Chinese to English.
Both parties were treated as not intending to appear at the hearing. Both the Opponent and the Applicant had not
filed any written submissions. In the Notice of Opposition, the Opponent sought to oppose registration of thesubject mark pursuant to sections 11(5)(a), 11(5)(b), 12(3), 12(4), 12(5)(a) and 12(5)(b) of the Ordinance.

225

Counter-statement
The Applicant asserted that the subject mark is dissimilar to the Opponent’s Mark, which usually consists of two
interlocking circles in red and orange colors with the overlapping area depicting a number of horizontal bars andthe word “MasterCard” prominently displayed across the circles. The subject mark consists of two blue and yellow
circles with the word “PayEco” prominently written on the circles. There are shadows underneath the circles, but
no horizontal bars in the overlapped area.
It was asserted that the Defendant’s Mark had a substantial reputation and is recognized as well-known throughout
the world due to the consistency of use of the mark over the years. The Defendant submitted that the subject mark isvery similar to the Defendant’s Mark, in particular, the interlocking circles of the subject mark are confusingly
similar to the Defendant’s Mark; further, the subject services are identical or similar to or are associated with the
Defendant’s Goods and Services; therefore, the subject services are very likely to be perceived by the public as
being provided by or connected with the Defendant. On the other hand, it was the Applicant’s view that the subject
mark, which consists of a device of blue and yellow circles with shadows underneath and the word “PayEco”
prominently written on the device, is dissimilar to the Defendant’s one.
The opposition against the subject application failed as none of the Defendant’s grounds of opposition had been
accepted.
10. Tags① Type of trial② Decision③ Type of bad faith✓Free Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others226

HUNGARYv.
1. TitleAUTÓ 2

2. Country

Hungary

3. Court

Supreme Court

4. Case No.

Pfv. IV.20.710/2008/5.

5. Date of the judgment

2008/10/08

6. Parties: Plaintiff

Unpublished

Defendant
7. Mark

Hungarian Patent Office
Plaintiff (disputed trademark)Defendant

8. Outline of the case
The disputed trademark was not registered in bad faith.
9. Summary of the judgment
The Respondent is the proprietor of the trademark “a2 AUTO2” (registration number: 155462). The Applicant
requested the Authority to declare the trademark invalid and alleged (1) a lack of distinctive capacity, (2) the badfaith of the Respondent and finally, (3) a violation of the right to the name. The Office refused the claim. The first
instance also refused the claim to reverse the decision in its final judgment.
The Supreme Court affirmed the judgment of the first instance. The Supreme Court established that, without adoubt, the trademark was distinctive in relation to other goods or services, hence it could not be the reason for
declaring the trademark invalid.
The Court also ruled that the Respondent did not act in bad faith when it filed the application for the trademark,since the position of D. G. (managing director of the respondent) as an editor and the producer of the television
program provided him due cause to seek the protection of a trademark. It does not constitute bad faith per se on his
side that he was aware of the fact that later the Applicant published a newspaper with a similar title.
The Court also ruled that it was not proved by the Applicant that a civil law partnership was established by theparties, hence the name “Autó2” did not constitute the name of a partnership. As a consequence, the violation of
the right to a name could not be established.

227

10. Tags① Type of trial

Invalidation Procedure② Decision

Maintained the First Instance Judgment③ Type of bad faith✓Free Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others228

AFRICANA
1. Title

AFRICANA

2. Country

Hungary

3. Court

Hungarian Intellectual Property Office (HIPO)

4. Case No.

SZTNH M0902930

5. Date of the judgment

25/02/2011

6. Parties: Plaintiff
Defendant
7. Mark

Hungarian Patent Office
Plaintiff (disputed trademark)Defendant

AFRICANA
colored figurative trademark-

8. Outline of the case
The disputed trademark was not registered as the HIPO found the registration to be made in bad faith.

9. Summary of the judgment
The application of AFRICANA for a colored figurative trademark (disputed trademark) was rejected for class 30“chocolates, cocoa, etc.”.
The applicant of the disputed trademark had many previous word trademarks and figurative trademarks containing
the word “AFRICANA” which were all registered for goods at class 30. The person making later observation(observer) of the disputed trademark contacted the owner to purchase or license the already registered AFRICANA
trademarks. The owner declined the negotiations, however the owner had not used the trademarks in Hungary.
The observer filed deletion requests against the already registered trademark based on non-use. The HIPO declaredthat as the owner had not used the trademarks, the protection of such trademarks was invalid. The disputed
trademark was filed for application during the process of the deletion procedure of the already registered trademark
but before the decision was made by HIPO.
During the registration procedure of the disputed trademark, HIPO declared that the aim of registering the disputed
trademark was to circumvent the obligation to use regarding prior trademarks and that it is against the abuse ofrights principle, therefore the application of the disputed trademark was made in bad faith.

229

10. Tags① Type of trial

Registration procedure② Decision

Not registered③ Type of bad faithFree Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company✓

Lack of intention to use
Others230

INDIAVOLVO v. VOLVO
1. Title

VOLVO v. VOLVO

2. CountryIndia

3. Court

High Court of Delhi

4. Case No.

CS (OS) No. 1492/2005, Citation-2011(45)PTC207(Del)

5. Date of the judgment

13.12.2010

6. Parties: Plaintiffs

Aktiebolaget Volvo and Ors.

Defendants
7. Mark

Kishore Purohit and Ors.
Plaintiff

Defendant(disputed trademark)
VOLVO

VOLVO

8. Outline of the caseA case where the Court passed an order restraining the Defendants from use of the trademark VOLVO with respect
to mixers, grinders, juicers and their parts. The Court also directed the Defendant to withdraw the trademark
application so filed before Trademarks Registry seeking registration of the trademark VOLVO on account of thesame being dishonest and taking unfair advantage of the reputation of the trademark of the Plaintiff.
9. Summary of the judgment
The Plaintiff was in the business of manufacturing cars as well as heavy commercial vehicles such as trucks, buses
and construction equipment, driving systems for marine and industrial applications, aircraft engines and space
propulsion components. Plaintiffs also created a range of VOLVO Merchandise goods to support their corebusiness and had used the trademark VOLVO in relation to belts, buckles, bags, watches, pens, clothing and a rangeof other accessories.
VOLVO is stated to be a Latin word which Plaintiff No. 1 had adopted for its business, and it was asserted that it
had all the trappings of an invented mark. It was further asserted that VOLVO did not convey anything in its
ordinary significance and it was neither a geographical indication nor a surname and its mark has now come to be
associated exclusively and solely with the Plaintiff. The Plaintiff claimed tremendous goodwill and reputation in
the mark VOLVO.
In July 2005, the Plaintiff was informed of the trademark application No. 1304378 filed by Defendants before theRegistrar of Trademarks for registration of the mark VOLVO in class 7 with respect to mixers, grinders, juicers andtheir parts. The Plaintiff filed an Opposition to registration of the mark VOLVO by the Defendants. On making
enquiry, the Plaintiff came to know of the use of the trademark VOLVO by the Defendants for manufacturing,
selling and using mixers, grinders, juicers, etc.

231

The Court observed that the name VOLVO, on account of its extensive use by the Plaintiffs since 1915, had become
associated exclusively with the Plaintiff’s companies and the products being manufactured and sold by them. The
Court further observed that trademark publication and use of the mark VOLVO by Defendants for the mixers,
grinders and juicers being manufactured and sold by him was dishonest and that the Defendant wanted only to cashin on the tremendous goodwill and reputation which was vested in the trademark VOLVO, belonging to thePlaintiff. The name VOLVO has no connection with the products being manufactured by Defendant No. 1 and,
therefore, it was difficult to deny that the purpose of Defendant No. 1 in using this mark for selling the products
manufactured by him was to gain an unfair advantage by using the reputed and well-established trademark of thePlaintiff.
There is a strong probability that a consumer who came across mixers, grinders and juicers being sold under thename VOLVO assumed that these are the products being manufactured and/or sold by the Plaintiff which owns thetrademark VOLVO and that he/she may purchase the product manufactured by Defendant No. 1 on the assumption
that, coming from the Plaintiff’s company, the products are likely to be of a superior quality. If the products
manufactured by Defendant No. 1 and being sold by him under the name VOLVO are not found to be of a superior
quality or their quality is not found to be of the standard expected by the consumer from the Plaintiff companies,that may affect the credibility and reputation of the Plaintiff since the consumer may believe that the quality of the
products being manufactured by the Plaintiff has gone down.

With the above observation, the Court restrained the Defendant from selling, distributing or marketing any
products using the mark VOLVO or any other mark which is similar to VOLVO owned by the Plaintiff. The Court
also directed the Defendant to withdraw trademark application No. 1304378 pending before the trademark registry
within 30 days of the decision.
10. Tags① Type of trial

Suit for Permanent Injunction Restraining
Infringement of Trademark and Passing Off② Decision

Defendant Restrained from Use as Well as
Registration of the Mark VOLVO③ Type of bad faith✓Free Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others232

EGO v. EGO
1. Title

EGO v. EGO

2. CountryIndia

3. Court

The Intellectual Property Appellate Board(IPAB)

4. Case No.

ORA/49/2008/TM/DEL

5. Date of the judgment

01.05.2009

6. Parties: Appellant

A.V.R. Engineers

Respondents

Rajinder Singh, trading as Master Metal Industries and
The Registrar of Trademarks

7. Mark

ApplicantRespondent (disputed trademark)
EGO

EGO

8. Outline of the caseA case in which the Respondent No.1’s registered trademark was determined to have been obtained contrary to the
ethics of business as the user’s claims in the application were false. The case also highlighted that the objective of
maintaining a Trademark Register was to show to the public that the goods they are buying belong to or are
manufactured and sold by a particular person.
9. Summary of the judgment
The Applicant engaged in the business of manufacturing, marketing and sale of C.P. bathroom fittings, valves,
cocks and industrial valves of all types since the year 1984. The Applicant adopted the trademark EGO honestly
and bonafidely and had been using the same since 1984 continuously, uninterruptedly and exclusively as proprietor
and owner. The Applicant was the prior adopter, user and registered proprietor of the trademark EGO.

The Respondent No. 1 is an ex-commissioned agent of the applicant and worked for the Applicant till 2001. The
Respondent No. 1 had fraudulently and illegally obtained the impugned registration of the trademark "EGO" underNo. 1047896 in class 11 with respect to valves, cocks and pipe fittings for water supply and sanitary purposes
included in class 11.

The Applicant placed on the record documents to establish that Respondent No. 1 was their commissioned agent
till the year 2001 and also was aware of the applicant's use of the trademark. The Tribunal sustained the plea offraud against Respondent No. 1.

The Tribunal further observed that Respondent No. 1 also obtained registration by contravention of the provisionsof Section 18 of the Trademarks Act, 1999. Upon perusing the impugned Trademark Journal advertisement, it was
clear that the application for registration had been made in the year 2001 and claiming users since 1998, whereas
from the purchase orders, it was seen that the Respondent had notbeen placing orders until 2001.

233

From the above, it was clear that what the user claimed in the application was not with bonafide intention.

In view of the above, the Tribunal allowed the application for cancellation and directed the Registrar to cancel thetrademark No. 1047896 in class 11 from the Register of Trademarks.

10. Tags① Type of trial

Cancellation proceedings before
Intellectual Property Appellate Board(IPAB)
Respondent No.1’s impugned registration
was cancelled② Decision③ Type of bad faithFree Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others234✓

JAGUAR v. JAGUAR
1. Title

JAGUAR v. JAGUAR

2. CountryIndia

3. Court

Intellectual Property Appellate Board(IPAB)

4. Case No.

OA/21/2008/TM/KOL, Citation - MIPR2013(2)187

5. Date of the judgment

30.04.2013

6. Parties: Appellant

M/s. Jaguar Cars Limited

Respondents

M/s. Manufacture Des Montres Jaguar S.A. and
Deputy Registrar of Trademarks

7. Mark

Appellant

Respondent (disputed trademark)

JAGUARJAGUAR

8. Outline of the caseA case wherein the Respondent No. 1 claimed to be the proprietor of JAGUAR for watches and filed a trademark
application for registration of trademark JAGUAR in class 14. The Appellant aggrieved by the dismissal of theAppellant’s opposition against the said application, filed appeal before IPAB. The IPAB allowed the appeal of theAppellant holding that the application of Respondent No. 1 for registration of JAGUAR if allowed will dilute thedistinctiveness associated with the Appellant’s well-known trademark JAGUAR.
9. Summary of the judgment
The Appellant filed the present appeal seeking appeal of the order of the Deputy Registrar of Trademarks, Kolkata
that dismissed the Appellant's opposition under No. Cal 55349 of the Respondent No. 1’s application 557229 forthe registration of trademark JAGUAR in class 14 with respect to "watches and parts thereof but excluding clocks".

The Appellant is the owner of the trademark JAGUAR for cars and also for watches. The Respondent No. 1 had
filed an application for registration of the impugned mark for watches on 21.08.1991 on a 'proposed to be used'basis. The Appellant coined the mark JAGUAR in 1938 and filed an application for watches in 1996. The Appellant
held over 800 registrations worldwide for cars and other merchandise including watches under the trademark
JAGUAR. As per the Appellant, the trademark 'JAGUAR' had been upheld as a well-known mark in numerous
cases and in diverse jurisdictions including Japan, France, China etc.

The Tribunal observed the main purpose of a trademark registration is to protect the distinguishing power of the
trademark. The Act seeks to protect the commercial value of a mark that is registered. An infringer slowly whittles
away the trademark’s distinctiveness. Why was the Appellant herein so agitated? Their primary fear was that 75
years of brand building was being diluted by the use of an identical mark albeit for non-competing goods andthereby losing its capacity to signify a single source. The strength of the Appellant mark JAGUAR was not235

in dispute. It was an instantly recognizable brand. The question was whether its reputation extended to products
other than cars and automobiles. In India such protection is extended by the concept of a well-known mark. One of
the legal effects of the various provisions relating to well-known marks embodied in the Act is that the registrar
shall not register a trademark which is identical to an earlier trademark (which subsumes the concept of well-knownmark) in a manner that is likely to have the effect of depreciating the value of goodwill attached thereto. These
provisions have to be co-jointly read with the concept of trans-border reputation in India. The Appellant's
apprehension here was that the Respondent No. 1 was enticing customers in India on the strength of the Appellant's
fame, which would depreciate the value of the goodwill attached to the JAGUAR car , which in some jurisdictions
would be regarded as reputation leeching and would be outlawed.
The Tribunal further observed that just because JAGUAR was a common dictionary word, it gave no license forany person to freely grab it for adoption and abuse without any regard to the market realities of how big that word
has grown across nations. This was a good example of free riding on someone else goodwill.
As far as trademark classification is concerned, the Tribunal opined that classification is only an administrative tool
for the registry for search purposes and is not a failproof test to eliminate likely market confusion.
In view of the above reasons, the Tribunal passed an order for refusal of application No. 695799 in Class 14.
10. Tags① Type of trial

Appeal against the order of the Deputy
Registrar② Decision

Application for registration of JAGUAR inclass 14 was refused③ Type of bad faith✓Free Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others236

MAGGI v. MAGGI
1. Title

MAGGI v. MAGGI

2. CountryIndia

3. Court

Intellectual Property High Court

4. Case No.

OA/12 to 14 & 19/2010/TM/MUM and M.P. No. 29/2010 Citation-2013(56)PTC94 (IPAB)

5. Date of the judgment

31.05.2013

6. Parties: Appellant

Societe Des Produits Nestle

Respondents
7. Mark

Swaraj Industrial and Domestic Appliances Pvt. Ltd. & Ors.
Appellant

Respondents (disputed trademark)

MAGGI

MAGGI

8. Outline of the caseA case in which the Respondents adoption was held to be contrary to honest trade practices and aimed at
trading upon the goodwill and reputation of the Appellant.
9. Summary of the judgment

The Appellant was aggrieved by the order dated 19.9.2009 passed by the Senior Examiner of Trademarks
four oppositions and allowing Respondent No. 1 applications to proceed for registration as per trademark
procedure.

The Respondent No. 1 filed an application for registration of the trademark MAGGI in Class-11 withrespect to electronic goods e.g. electric fans, heaters, geysers, bulbs, tube-lights, torches, exhaust fans,emergency lights, transformers, electric fittings, stabilizers, regulators, electric hot plates for cooking,fridges, air conditioners, water coolers etc., under Application No. 52532. The application was filed on
10.01.1990 claiming user since January, 1984. The said application was advertised in the Trademarks
Journal No. 1129 dated 16.06.1996. This was opposed by the Appellants herein on various grounds.
The Respondent No. 1 filed another application for registration of trademark MAGGI under No. 522533 inclass-21 with respect to Domestic utensils, household articles etc. all being goods included in class 21 inJanuary, 1990 and claiming users since January, 1984. This was advertised in Trademark Journal No. 1129
dated 16.6.1996. This was opposed for registration by the Appellants.

237

The Respondent No. 1 also filed an application for registration of the trademark MAGGI on January 1990
under No. 522531 in class-7 with respect to washing machines, grinding machines, mixers, juicers andslicer attachments and parts thereof claiming users since January 1984. The same was advertised in theTrademarks Journal No. 1129 dated 16.06.1996. The Appellants opposed said registration.

Respondent No. 1 on 22.03.1994 filed an application for registration of trademark MAGGI under No.
622735 in Class 8 with respect to hand tools and implements (hand-operated) and cutlery claiming users
since August, 1992. It was advertised in the Trademark Journal No. 1299 dated 21.07.2003. The same was
opposed by the Appellants herein.

The Senior Examiner of Trademarks heard all the four matters together and passed a common orderwhereby the objections under Sections 9 and 11 of the Act were rejected as the possibility of confusion
among the public was less significant. Though the marks were identical, the goods were different. The
Senior Examiner of Trademarks further observed that the objection under Section 11(2) were not accepted,
as the opponents (appellants) had not proved that their trademark is a well-known trademark and therefore
the objection under Section 11(10) was also not accepted. The Respondent No. 1’s adoption was held not to
be in bad faith.
After hearing both parties and upon consideration of evidence on record, the IPAB observed that
Respondent No. 1 had no reason or explanation for adopting the trademark, MAGGI. The Appellants had
established their business under the trademark MAGGI in India and abroad. The Appellants goods bearing
the trademark MAGGI had thus acquired a good reputation and goodwill among the public and in trade.
The Respondents adoption in such circumstances could not be said to be honest and it was only to trade
upon the goodwill and reputation of the Appellants. IPAB further observed that permitting the Respondent
No. 1 to carry on business under the trademark MAGGI would be approving their dishonest and willful
conduct. This would also amount to encouraging the Respondent to practice fraud against the public. When
the Respondents had no reason for their adoption, such adoption would not be allowed to be used orregistered.
In view of the abovementioned observations, IPAB set aside the impugned order of the Senior Examiner
and allowed the appeals.
10. Tags① Type of trial

Appeal against the order of the Trademarks
Registry (Senior Examiner of Trademarks)238

② Decision

Order of the Senior Examiner ofTrademarks was set aside③ Type of bad faith✓Free Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others239

SONY v. abt SONY
1. Title

SONY v. abt SONY

2. CountryIndia

3. Court

Intellectual Property Appellate Board (IPAB)

4. Case No.

OA/49/2007/TM/KOL, Citation- MIPR2014(1)95

5. Date of the judgment

2013/10/25

6. Parties: Appellants

M/s. Sony Kabushiki Kaisa & Anr.

Respondents
7. Mark

Mr. Purushottam Agarwal & Ors.
Appellant

Respondent (disputed trademark)SONY

abt SONY

8. Outline of the case
An Appellant set up a wholly-owned Indian subsidiary SONY INDIA PVT. LTD. and was using the trademark"SONY" on all its products related to electronics, whereas the Respondent was admittedly using the trademark"abt SONY" in relation to undergarments. The Tribunal observed that incautious, ignorant and upcountry
consumers were likely to be deceived. The main concept of both the marks hinged on SONY and therefore it was
clear the Respondents were trying to take unfair advantage of the famous mark SONY to the detriment of thereputation of the Appellant and were going against honest practice in industrial or commercial matters.
9. Summary of the judgment
The Appellant herein were aggrieved by the refusal of the opposition filed by them against the registration of the
trademark application No. 1255896 of the respondent by the Deputy Registrar of Trademarks and filed an appeal
to oppose the order and decision dated 3rd July, 2007 permitting the registration of the respondent's trademark"abt SONY" in class 25.
The Appellants were the registered proprietor of the trademark "SONY" in India in classes 3, 9, 14, 21 and 25.
Appellants also claimed "SONY" was an internationally well-known trademark used and registered in over 200
countries. According to a survey conducted by Harris Interactive in 2006, Sony was registered as the "Best
Brand" in the USA for the 7th consecutive year with an estimated brand value of over US $15 billion.
Appellants stated that they were the world leader in commercial, industrial electronic and entertainment
businesses and had aggressively expanded their business outside Japan.

240

The Tribunal observed that the Deputy Registrar erred in holding that the Appellants were only dealing inelectronic goods - ignoring the spillover effect of the goodwill and reputation of a well-known mark that travels
across borders and across all type of goods. The Tribunal further observed that the essential features of the
Respondent mark abt SONY include the whole of the appellants mark "SONY" with 'abt' used as a prefix inconjunction with SONY which is merely an alibi. The public and consumer will ask for SONY garments and not'abt', possibly thinking it originates from SONY trademark owners. Incautious, ignorant and upcountry
consumers were likely to be deceived. The main concept of both the marks hinged on SONY. It was clear the
Respondent was trying to take unfair advantage of the famous mark SONY to the detriment of the reputation of
the Appellant and was against honest practice in industrial or commercial matters. The inclusion of the word
SONY in the Respondent's mark very prominently was completely and out rightly dishonest as the impugned
mark included the whole of the Appellant's mark and stood out very prominently. These were unacceptablecommercial behaviors and unfair on the basis of bad faith.

In view of the above, the Tribunal allowed the Appeal and the application No. 1255896 in class 25 was refused
registration.
10. Tags① Type of trial

Appeal before IPAB against the order of
Deputy Registrar② Decision

Deputy Registrar’s impugned order wasappealed③ Type of bad faith✓Free Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others241

IRELANDMARIE CLAIRE v. MARIE CLAIREMARIE CLAIRE NETHERLANDS BV v. MARIE CLAIRE S.A AND

1. Title

BRANDWELL
2. Country

Ireland

3. Court

High Court of Ireland

4. Case No.

No. 582SP _ 2013

5. Date of the judgment

April 1, 2014

6. Parties: Plaintiff

Marie Claire Netherlands BV.

Defendant
7. Mark

Marie Claire S.A and Brandwell
Plaintiff (disputed trademark)MARIE CLAIRE

Defendant

MARIE CLAIRE

8. Outline of the caseA case law on trademark applications made in bad faith. The Irish High Court set out eighteen principles to beconsidered in assessing whether or not a trademark application was made in bad faith.
9. Summary of the judgment
In 1993, Brandwell applied to register the trademark Marie Claire for class 25. The application was opposed by two
separate proceedings. In 1997, while these oppositions were pending, one of the opponents made its own Irish
application for the same class. This Class 25 application was subsequently assigned to Marie Claire BV, thepublisher of a magazine called Marie Claire. Marie Claire S.A. and Brandwell (the “opponents”) opposed thisapplication at the Irish Patents Office on the basis that it was made in bad faith by the applicant. For thatreason, the request of registration was rejected.

In this judgment the Irish High Court provided a very full judicial consideration of what amounts to a
trademark application made in bad faith.

The judge undertook a comprehensive review of the case law on trademark applications made in bad faith andthen went on to list a total of eighteen principles that he derived from the case law. The principles are thefollowing:(1) Bad faith includes dishonesty;242

(2) Bad faith includes dealings that fall short of the standards of acceptable commercial
behavior observed by reasonable and experienced people in a particular area;(3) A relevant factor in determining whether there is bad faith is whether there has been afailure by the person against whom a charge is levelled to address that charge;(4) Awareness that a party has been using an identical or similar mark for an identical or similar
product in a least one EU Member State is not per se conclusive as to bad faith;(5) Consideration must be given to an applicant’s intention at the time of filing an application
for registration; intention to prevent a party from marketing a product may be an element of
bad faith;(6) A key issue is whether a mark is being used for its essential purpose, being to aid consumers
in distinguishing products;(7) The fact that a third party has long used a sign for an identical or similar product capable ofbeing confused with the mark applied for and that such a sign enjoys some level of legal
protection is a relevant factor when determining whether an applicant has acted in bad faith;(8) A person is presumed to have acted in good faith unless the contrary is proved;(9) An allegation of bad faith is a serious allegation which must be proved by cogent evidence on
the balance of probabilities;(10) It is not enough when seeking to establish bad faith to prove facts that are also consistent withgood faith;(11) Where a third party cannot maintain a relative ground of objection to registration, bad faith
involves some breach of legal or moral obligation by the third applicant towards the third party;(12) Bad faith may exist where an applicant has sought or obtained registration of a trademark
for use as an instrument of extortion;(13) Bad faith is not pertinent in a situation where there is a bona fide conflict between the
trademark rights, or perceived rights, of different traders;(14) It is not bad faith for a party to seek a trademark where third parties are using similarmarks and/or are using them for similar goods or services;(15) The fact that one party is aware of and has previously clashed with another is not the sameas saying the trademark application by one of those parties is made in bad faith;(16) Seeking to protect one’s commercial interests where one considers that one’s activities do not
impinge on the core activity of another is not bad faith;(17) Bad faith is the opposite of good faith; it generally involves (but is not limited to) actual orconstructive fraud; it may merely involve a design to mislead or deceive or some other sinister
motive; and(18) In determining whether there is bad faith, knowledge of third party use, an intention to prevent a third

party marketing a product and the lack of intention to use a trademark, as well as extent of the reputation of243the third party’s sign at the time of the application, are all relevant.
Having set out this very comprehensive list of principles, the judge was satisfied that the application by Marie
Claire BV to register the mark MARIE CLAIRE was not tainted by bad faith. Instead, it was an “honest applicationby Marie Claire Netherlands to register a genuinely disputed mark.” Accordingly, the judge overturned the decisionof the Patents Office that found Marie Claire BV to have acted in bad faith in making the application. These
differing conclusions by the Irish Patents Office and the Irish High Court on the same evidence highlight the
subjective nature of bad faith. It would appear that the High Court applied (4), (13), (14), and (15) of the above
principles to the facts whereas the Patents Office applied (2), (5), and (7). Since the concept requires no less thaneighteen principles to enunciate it properly, it is inevitable that there is abundant room for debate in any given case.

Like many other trademark laws, the Irish Trademarks Act requires the trademark applicant to state that the mark is
being used or that there is a bona fide intention to use the mark. The Irish court characterized this as “a procedural
requirement, not a substantive ground of objection.” (As noted in the eighteen-point list above, however, a lack ofintention to use the mark can feature in a bad faith analysis.) In any event, there was no evidence before the Irish
court of an absence of a bona fide intention to use the mark. The Court therefore rejected this ground of opposition.

Despite its successful defense of the first two opposition grounds, the applicant’s mark was rejected in view of
its perceived conflict with earlier rights. In a relatively straightforward application of the three-part test for
passing off, the judge was satisfied that, through the substantial sales and promotion of their products in Ireland
since 1992, the opponents had developed the requisite goodwill attaching to the mark MARIE CLAIRE.
10. Tags① Type of trial

Suit in order to obtain the invalidation of
the trademark② Decision③ Type of bad faithFree Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use✓

Others244

ISRAEL
SUJOK
1. Title

Cancellation of the Trademark SUJOK

2. Country

Israel

3. Court

Trademark Registrar

4. Case No.

Motion for cancellation of trademark No. 190390

5. Date of the judgment

29/11/2016

6. Parties:
Cancellation Applicant

Zvi Alfisher

Trademark Owner
7. Mark

Yoad Puttermilech
Cancellation Applicant

Trademark Owner(disputed trademark)
SUJOK

8. Outline of the case
Sujok is a combination of 2 words in Korean – “Su” and “Jok”, which means the palm of the hand and the footrespectively. Sujok is a technique of alternative medical treatment invented and developed by Prof. Jae Woo Park
from South Korea.
The cancellation applicant founded and owns Tehila College, where the Sujok technique has been taught andpracticed. At the time the trademark owner applied for registration of the trademark, the cancellation applicant had
been teaching the Sujok technique in his college in cooperation with Dr. Park, the inventor of Sujok.
The cancellation applicant claimed that the application for registration of the trademark was filed in bad faith, since
it was filed in order to become the sole owner of the trademark and to gain monopoly over the Sujok technique,preventing others from practicing or teaching Sujok, including Tehila College.
The trademark owner contended that his application had been filed with Dr. Park’s knowledge and blessing. The
fact that the trademark was registered only under the trademark owner’s name was due to technical reasons and did
not derive from bad faith.
9. Summary of the judgment
The circumstances indicate that the fact that the trademark was registered only under the trademark owner’s nameand not as a joint registration with Dr. Park was not due to technical reasons.
Therefore, it appeared that the application of the trademark had been filed in order to become the sole owner of the
trademark and to gain monopoly over the Sujok technique, preventing others from practicing or teaching Sujok.
Based on a comprehensive evaluation of these facts, the trademark was cancelled.

245

10. Tags① Type of trial

Motion for cancellation of trademark② Decision

Trademark was cancelled③ Type of bad faithFree Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others246✓

ITALYMANZANA v. BALORU MANZANA
1. Title

MANZANA v. BALORU MANZANA

2. Country

Italy

3. Court

Intellectual Property Court of Milan,

4. Case No.

R.G. 21371/2012 _ Decision n. 5794/2016

5. Date of the judgment

May 10, 2016

6. Parties: Plaintiff

Not disclosed

Defendant
7. Mark

Baloru s.a. and Uniontrade S.r.l.
Plaintiff (disputed trademarks)

Defendant

8. Outline of the caseA case in which a Plaintiff registered in bad faith three trademarks exactly identical to three of a Defendant’s
trademarks, which were well known in Ecuador for several years and under development also in Italy.
9. Summary of the judgment
Baloru (the Defendant) is one of the most important Ecuadorean companies involved in the sector of production
and commercialization of different kinds of fruit or vegetable juices, through different trademarks registered andused since 1970 in Ecuador, Latin America and U.S.A., including the three trademarks “MANZANA”, “BALORU
MANZANA” and “SABOR TROPICAL” shown above.
When a lot of Ecuadorean people began to move to Europe in the first years after 2000, Baloru decided to extend

247

its business also to Europe and in particular in Italy: for this reason, Baloru filed and registered in the EU and in
Italy the trademarks “BALORU MANZANA” and “MANZANA” in 2007 and “SABOR TROPICAL” in June,
2010.

The Plaintiff filed and registered three identical (or extremely similar) trademarks in Italy between August 2010
and March 2011 (in particular, the Plaintiff registered the trademark “TROPICAL” in Italy earlier than Baloru).
Therefore, the Plaintiff decided to start a lawsuit against Baloru and its distributor Uniontrade, claiming damages
for unfair competition and for infringement of its trademarks. Baloru and its distributors asked the Court for theinvalidation of the Plaintiff’s trademarks, filed in bad faith, and for damages.
The Court recognized that the Plaintiff’s trademarks had been registered in bad faith and only to usurp the rights ofBaloru in Italy. Therefore, the Court established that the Plaintiff’s trademarks were void and that its behavior was
illicit.
10. Tags① Type of trial

Suit to obtain the invalidation of trademarks
and damages arising from counterfeiting andunfair competition behaviors② Decision

Invalidation of the trademarks③ Type of bad faithFree Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others248✓

HAVAIANAS v. HAVENA
1. Title

HAVAIANAS v. HAVENA

2. Country

Italy

3. Court

Intellectual Property Court of Turin

4. Case No.

R.G. 635/2012

5. Date of the judgment

July 11, 2014

6. Parties: Plaintiff

Alpargatas S.A.

Defendant
7. Mark

Asian Trade S.r.l.
Plaintiff (disputed trademarks)

Defendant

8. Outline of the caseA case in which the Defendant registered in bad faith a trademark with awareness that this trademark caused
confusion with goods connected with the Plaintiff’s business.
9. Summary of the judgment
Alpargatas (the Plaintiff) is one of the most important Brazilian companies involved, since 1962, in the sector of
production and commercialization of flip-flops all over the world under the brand “HAVAIANAS”.
In 2010, the Italian Authority seized several flip-flops branded “HAVENA CLUB”, produced and sold by Asian
Trade (the Defendant) that were identical to Alpargatas’ flip-flops under different aspects, among which was a very
confusing figurative trademark.
In 2011, Alpargatas and Asian Trade reached a settlement agreement under which Alpargatas undertook to cease
the commercialization of the contested flip-flops and to withdraw, cancel and not use in the future the contested
figurative trademarks.
The day before the signature of the agreement, Asian Trade filed a new figurative trademark (that was not
mentioned in the agreement) very similar to the previous ones and extremely similar to the well-known trademark“HAVAIANAS” of Alpargatas.
When Alpargatas discovered the above new filing, it opened a law suit against Asian Trade in order to obtain adeclaration of invalidity of the new trademark and claimed compensation for damages.

249

The Court explained that the contested trademark (and new one) had been registered by Asian Trade withawareness of its similarity to Alpargatas’ trademarks and, moreover, in full awareness that this trademark caused
confusion with goods connected with the Plaintiff’s business. Therefore, the Court established that the last
trademark, filed by the Defendant a day before the signature of the settlement agreement and not mentioned in it,
had to be considered void for bad faith.
10. Tags① Type of trial

Suit in order to obtain invalidation of the
trademark and damages② Decision

Invalidation of the trademark③ Type of bad faith✓Free Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others250

KENYAKENYA BOYS CHOIR v. KENYAN BOYS CHOIRIn the Matter of Trademark No. 67586 “KENYA BOYS CHOIR” (Words) and1. Title

opposition proceedings thereto by KENYAN BOYS CHOIR
2. CountryKenya

3. Court

Kenya Industrial Property Institute Tribunal

4. Case No.

N/A

5. Date of the judgment

27th February 2015

6. Parties: Proprietor

Joseph Muyale Inzai

Applicant(s)7. Mark

Kenyan Boys Choir:i. Henry Wanjalaii. Sylvester Matete Makob
iii. Cliff Njora Njugun
iv. Masambaya Fredrick Ndukwe
v. Geoffrey Sauke
Proprietor (disputed trademark)Applicants“KENYA BOYS CHOIR”“KENYAN BOYS CHOIR”

8. Outline of the caseThis case was instituted through a cancellation application filed by the Kenyan Boys Choir (the Applicants) against
trademark application number 67586 “Kenya Boys Choir” (Words) (the Trademark). The Trademark had beenregistered in Classes 16 and 41 under the name of Joseph Muyale (the Proprietor). The Applicants premised theirapplication on, among others, the grounds that the registration of the Trademark was fraudulent or carried out inbad faith.
9. Summary of the judgment
The Kenyan Boys Choir was started in 1997 as the Aquinas High School Choir and with the Proprietor as the choirmaster and the Applicants as members. Its name was later changed to the Kenyan Boys Choir. The choir grew insize and stature and began to take part in several tours and performances using the name Kenyan Boys Choir. In
2010, the Proprietor successfully applied for and obtained registration of the mark “KENYA BOYS CHOIR”.

The Applicants filed the trademark cancellation application on the grounds that they were the owners of the similar“THE KENYAN BOYS CHOIR” and “THE BOYS CHOIR OF KENYA” names and that they had obtained251

registration of these names as business names. The Applicants argued that the Proprietor’s intention in registering
the Trademark was to ride on the goodwill that the choir had garnered in Kenya and especially in the
United States of America and to block the Applicants from obtaining bona fide registration of their marks.

The Registrar noted that the trademark registration application form filled by the Proprietor contained a claim forprotection of several variants of the term “Kenya Boys Choir”. The Registrar was of the view that this conduct by
the Proprietor indicated an attempt to bar the Applicants from using their name and any possible variants of thewords ‘Kenya Boys Choir’. The Registrar also noted that the Proprietor and the Applicants (Kenyan Boys Choir)
had entered into a tripartite agreement dated 18th February, 2010 with the Universal Music Classical Management& Production Limited of London and the Proprietor. This tripartite agreement related to a tour that the Kenyan
Boys Choir was scheduled to undertake out of the country. The court noted that the Proprietor had signed thisagreement, not as a member or proprietor of the Applicants (Kenyan Boys Choir) that he claims to have founded
and legally owned but in his individual capacity as Joseph Muyale Inzai, T/A as the Musical Arts Academy of
Nairobi. On this basis, the Registrar expressed the view that the Proprietor’s attempt to get exclusive rights over the
Trademark and its variations demonstrated that the registration of the Trademark was not made in good faith andthat a proprietary right obtained through bad faith cannot be protected. The Registrar went further to state as
follows:“…the claim for proprietorship of a trademark should be a justifiable one and that where such a claim cannot
be made by the proprietor of the mark in good faith, then such a mark would be liable for expungement fromthe Register of Trademarks.”

Based on this, the Registrar ordered for the expungement of the mark from the Register of Trademarks.
10. Tags① Type of trial

Application for the expungement of a markfrom the Register② Decision

Invalidation③ Type of bad faithFree Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others252✓

LATVIASAP HANA VS.

HANA

1. Title

SAP HANA VS. HANA

2. Country

Latvia3. Court

Patent Office of the Republic of Latvia, Board of Appeal

4. Case No.

RIAP/2017/M 70 122-Ie

5. Date of the judgment

28/06/2017

6. Parties: Plaintiff

SAP SE

Defendant
7. Mark

GRIGORIOUS HOLDINGS SIA
Plaintiff

Defendant (disputed trademarks)

SAP HANA

HANA

8. Outline of the case
The Board of Appeals ruled that the Disputed Trademark had been registered with no factual intent to use on the partof the Defendant and had been registered in bad faith for malevolent economic purposes.
9. Summary of the judgment
This case concerns a suit brought by the Plaintiff, a capital company registered in Germany, against the Defendant.
The Defendant is a company registered in Latvia associated with the infamous Michel Gleissner, an entrepreneur
who has made a business by registering high-profile trademarks that are similar or identical to high-value domainnames, products and companies. The Disputed Trademark (M 70 122), the Plaintiff claimed, was very similar to its
own trademark (EUTM 009873365). The Plaintiff argued that the registration of the Disputed Trademark may be
used to exploit the European trademark system, as a previously-registered national mark such as the Disputed
Trademark may be used to press a claim for a European Trademark against the legitimate interests of the real brandor product owner.

Evidence was brought forth that the Defendant had not been engaged in any commercial activity since it wasestablished. The only public action that the Defendant had taken for the duration of its existence as a company was
the submission of trademark applications to the Patent Office of the Republic of Latvia. The applied-for marks
were similar or identical to high-value, internationally recognizable trademarks or brand names. The Plaintiff notedthat the Defendant was a party to more than two dozen concurrent proceedings with respect to the registration ofsuch trademarks.

The Court, outside of any bad faith considerations, noted that the Disputed Trademark had the potential to confuse

253potential consumers, especially in consideration of the fact that the Defendant attempted to register the Disputed
Trademark in the same category of goods and services as the marks of the Plaintiff. When evaluating whether the
Defendant had acted in bad faith, the Court adjudged that the evidence was clear that it had the intention to
malevolently exploit the similarity of the Disputed Trademark to the marks of the Plaintiff for economic gain.
Furthermore, the Board concluded that the Defendant had no intention to commercially use the Disputed
Trademark. The final determination was that the registration of the Disputed Trademark was done in bad faith, andthus considered invalid.
10. Tags① Type of trial

Suit to oppose the registration of a
trademark② Decision

Registration of the Disputed Trademark
held to be invalid③ Type of bad faithFree Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company✓

Lack of intention to use
Others254

MALAYSIA,v.

1. Title
2. Country
3. Court
4. Case No.
5. Date of the judgment
6. Parties: Plaintiff
Defendant

GS Yuasa Corp v. GBI Marketing Malaysia Sdn Bhd
Malaysia
Kuala Lumpur High Court (Intellectual Property)
24IP-48-12 OF 2015
2 November 2016
GS Yuasa Corp
GBI Marketing Malaysia Sdn Bhd

7. Mark

Plaintiff

Defendant (disputed trademark)(TM No. 98013472)(TM. No. 05005790)(TM No. 00005524)
8. Outline of the case
The Plaintiff applied to the High Court (“Court”) to expunge Defendant’s Trademark from the Register ofTrademarks.
9. Summary of the judgment
The Plaintiff was a joint venture between Japan Storage Battery Co Ltd (“JSB”) and Yuasa Corp (“YC”). The
Plaintiff was the first user of the trademark, “GS” (Plaintiff’s Trademark) in Malaysia. The Plaintiff’s Trademark
was coined by adopting the first letters of the name of JSB’s founder. Since the 1960s, JSB has used the Plaintiff’s
Trademark in Malaysia and sold storage batteries bearing the Plaintiff’s Trademark for cars and motorbikes to a
distributor in Malaysia. The Plaintiff also registered the two trademarks depicted above in Class 9.
The Defendant’s Trademark was registered by Osima Batteries Ind Sdn Bhd (‘OBI’) on 18 April 2005. The
Defendant’s Trademark was later assigned and transferred by OBI to the Defendant. Plaintiff claimed that the
Defendant was part of an “international conspiracy” which fraudulently applied for and obtained registration of
trademarks in Malaysia and Indonesia for storage batteries which were deceptively and/or confusingly similar to
the Plaintiff’s Trademark.
The Court was of the view that the Plaintiff’s business was adversely affected by the use of the Defendant’s
Trademark. The Defendant’s Trademark was likely to deceive and/or confuse the public to think that the
Defendant’s goods bearing the Defendant’s Trademark originated from or were associated with the Plaintiff.
Accordingly, the Defendant’s use of the Defendant’s Trademark caused grievance to the Plaintiff.

255

Based on a comprehensive evaluation of evidence and facts, the Court ordered that the Defendant’s Trademarks be
expunged from the Register of Trademarks on the following grounds:a) The original registration of the Defendant’s Trademark had been obtained by fraud on the Registrar by OBI.
Evidence showed that OBI had actual knowledge of the Plaintiff’s Trademark and that it was not the common
law owner of the Defendant’s Trademark. OBI had copied or uplifted the Defendant’s Trademark from thePlaintiff’s Trademark. The Court also found that OBI, the Defendant and an Indonesia-based company had
conspired to register trademarks in Malaysia and Indonesia which are deceptively and/or confusingly similar
to the Plaintiff’s Trademark;b) The trademarks in question shared a striking similarity, namely the alphabets ‘G’ and ‘S’ which were featured
most prominently in the marks. The goods of interest by the Plaintiff and Defendant were the same. The use of
the Defendant’s Trademark on the Defendant’s products was therefore likely to deceive and/or confuse thepublic to think erroneously that the Defendant’s goods originate from or wereassociated with the Plaintiff; andc) The Defendant’s Trademark was not distinctive of the Defendant’s goods on the date of filing the suit as the
Defendant had not produced any documentary evidence on the sales of the Defendant’s goods. There was alsoa real likelihood of deception and/or confusion for use of the Defendant’s Trademark.
Premised on the above, the Court ordered that the Defendant’s Trademark be expunged (removed) from theRegister.
10. Tags①Type of trial

Suit to expunge (remove) registeredtrademark②Decision

Invalidation (Expungement)③ Type of bad faith✓Free Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others256

MYANMARSTANDING CHINTHAY v. SITTING CHINTHAY & SITTING CHINTHAY & TWO
1. Title

K. E. Mohamed Ebrahim & Anr. v. The Taj Mahal Stationery Mart

2. Country

Myanmar

3. Court

Supreme Court

4. Case No.

Civil Appeal 11 of 1950

5. Date of the judgment

23.08.1952

6. Parties: Appellants

K. E. Mohamed Ebrahim & Anr

Respondents
7. Mark

The Taj Mahal Stationery Mart
Appellant

STANDING CHINTHAY(Lion)
device markRespondent(disputed trademark)
SITTING CHINTHAY device mark&
SITTING CHINTHAY & TWO
DRAGONS device mark8. Outline of the case
The Appellants-Plaintiffs were engaged in the business of import and wholesale of various classes of goods,
including exercise books under a “Standing Chinthay (Lion)” device mark. The said trademark is well-known. The
Respondents began selling stationary articles such as exercise books and pocket notebooks in Rangoon and otherparts of Burma using a “Sitting Chinthay” device as well as a “Sitting Chinthay & Two Dragons” device, which theAppellants claimed were fraudulent and a colorable imitation of the Appellant’s Chinthay trademark.
The Appellants filed a suit for passing off before the Trial Court. The Respondent argued that the said Lion device
was a common mark used almost everywhere in Burma and there could not be any exclusive rights therein. Further,
there was no scope for confusion or deception. The Trial Court, however, decreed that the suit granted an injunction
against the Respondent with respect to both the marks and for all articles of stationary.
On appeal, the Appellate Civil Court reversed the order of the Trial Court holding that, although there was
exclusive right over the device mark with respect to exercise books, this did not give the Plaintiffs a monopoly over
all kinds of stationery. Furthermore, the Respondent’s device mark, which consisted of additional prominent
features such as the Two Dragons Device could not be mistaken for the Appellants’ mark. The injunction therefore
was limited to only exercise books with respect to the Sitting Chinthay Device only. The Appellants therefore filed
an appeal before the Supreme Court which slightly modified the decree.
9. Summary of the judgment
Appellate Civil Court:
The Appellate Court noted that since there was no system of registration of trademarks or a statutory title to a
trademark in Myanmar, the rights of parties in such cases must be determined by Common Law. It did not make any
difference if the customers did not know the name of the entity selling a product under a trademark

257

so long as they were able to identify the goods under that mark from goods from other sources. The exclusive rightover the Chinthay trademark with respect to exercise books did not give the Appellants a monopoly of the said
trademark over all kinds of stationery.

Supreme Court:
The Supreme Court agreed with the Appellate Civil Court’s finding that the Respondent’s trademark consisted ofadditional features, which were prominent, and could not be mistaken for the Appellants’ mark. It, however, notedthat there was sufficient evidence to show that the Appellants had established rights to the Chinthay trademark withrespect to diaries in addition to exercise books.
The Supreme Court affirmed the decision of the Appellate Court subject to the variation that the Appellants wereentitled to relief with respect to the impugned Chinthay mark for exercise books as well as diaries.

10. Tags① Type of trial

Appeal against the decree of Civil First
Appeal② Decision

The Supreme Court affirmed the decision of
the Appellate Civil Court.

③ Type of bad faith✓Free Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use✓

Others258

RANGOON OPTICAL WORKS v. RANGOON OPTICAL WORKS
1. Title

Ko Maung v. B Lall

2. Country

Myanmar

3. Court

Civil Appellate Court

4. Case No.

Civil 2nd Appeal 17 of 1962

5. Date of the judgment

09.06.1962

6. Parties: Appellants

Ko Maung Ngwe (Defendant in the first instance) Mr.

Respondents
7. Mark

B. Lall (Plaintiff in the first instance)
Appellant

RANGOON OPTICAL
WORKS

Respondent(disputed trademark)RANGOON OPTICAL WORKS

8. Outline of the case
The Plaintiff (Respondent) had been selling spectacles in the cities of Prome & Paungde under the trademark
RANGOON OPTICAL WORKS for the past 20 years and filed a suit against the Defendant (Appellant) for using
the trademark RANGOON OPTICAL WORKS for spectacles. The Trial Court refused the injunction on the
grounds that Rangoon was a geographical term that was not distinctive and that the Plaintiff could not claim aproprietary interest in the same. On appeal, the First Appellate Court reversed the ruling on the grounds that theterm “RANGOON OPTICAL WORKS” was descriptive and distinctive and the Plaintiff had acquired goodwill
and reputation therein, entitling protection. The Defendant therefore preferred an appeal to the Civil Appellate
Court, which was dismissed.
9. Summary of the judgment
The Appellate Court noted that, although there was a bar on registration in the UK and Indian Trademark Statutes
against names that indicate the place of manufacture and sale, a word was not a geographical term merely because it
was the name of a place on Earth. The Court noted that it was settled law that geographical names disconnectedfrom the origin of the goods were not indicative of the place of manufacture and were in fact distinctive.

The Court held that a name may become a trade denomination and, as such, the property of a particular person who
first used it for an article of manufacture. The Plaintiff had been using RANGOON OPTICAL WORKS for the past
20 years on spectacles manufactured by him in Prome. The Defendant’s subsequent use was clearly
intended to deceive the public and misappropriate the goodwill and reputation of the Plaintiff.

259

10. Tags① Type of trial

Appeal from a decision of the District Court② Decision

The Appellate Court affirmed the decision of
the Trial Court and granted injunction to thePlaintiff.

③ Type of bad faith✓Free Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others260

Trademark depicting elephant and lion with “Ko Kyaw”
1. Title

U Kyaw v. U Ba Aye

2. Country

Myanmar

3. Court

Criminal Appellate Court

4. Case No.

Criminal Appeal 252 of 1959

5. Date of the judgment

18.07.1962

6. Parties: Appellants

U Kyaw

Respondents

U Ba Aye

7. Mark

Appellant

Respondent(Disputed trademark)Two animals, viz., elephant and lion

Two animals, viz., elephant andwith “Ko Kyaw” printed between thelion with “Ko Kyaw” printed

pictures of the two animals

between the pictures of the two
animals

8. Outline of the case
The Appellant (Complainant) claimed to be the owner of the trademark depicting “two animals, viz., elephant andlion with the name Ko Kyaw printed between the pictures of the two animals” on a mechanical lighter. The
Appellant’s mark was in use for 3-4 years and was registered for 2 years prior to the complaint. A suit was filed intrial court alleging that the Respondent was selling and manufacturing mechanical lighters with an identical mark,which amounted to an offence under Section 483 of the Penal Code. The accused (Respondent) claimed that he had
merely bought the impugned lighters and did not manufacture the same.
The trial court acquitted the Respondent on the grounds that the Appellant was unable to prove beyond reasonable
doubt that he was the exclusive owner of the trademark or that the accused was manufacturing the mechanicallighters under the said trademark. The Appellant thereafter filed a Revision before the Appellate Court, which
upheld the decision of the Trial Magistrate.
9. Summary of the judgment
The Appellate Court noted that it was settled law that in Burma there is no method by which a trademark may beregistered, but property in, or right with respect to the mark, may be acquired by the owner. Therefore, the fact that
the Complainant had obtained his mark and registered was not a relevant factor and did not give him any right ofproperty over the mark. There were many other persons using similar/identical mark with respect to mechanicallighters as submitted by a witness. The aforesaid also corroborated the accused Respondent that he had only bought
the lighters and had not manufactured it, thus, there was no intention to defraud on the part of the accused.

261

10. Tags① Type of trial

Appeal from decision of Trial Court② Decision

The Appellate Court affirmed the decisionof the Trial Court on merits③ Type of bad faithFree Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use✓

Others262

NEW ZEALANDv

TOMTOM And

TOM TOM

1. Title

TOMTOM
COMMUNICATIONSINTERNATIONAL B.V.

2. Country

New Zealand3. Court

High Court

4. Case No.

[2015] NZHC 3333

LIMITEDV

TOMTOM

5. Date of the judgment 2015/12/18
TOMTOM COMMUNICATIONS LIMITED AND GAYLENE RUTH
6. Parties: Appellant
Respondent

HOSKINGTOMTOM INTERNATIONAL B.V.

7. Mark

Appellant (disputed trade mark) Respondent
TOMTOMAnd

TOM TOM

8. Outline of the caseA case in which the Court agreed with the earlier decision of the Assistant Commissioner andheld that there was no evidential basis for the contention that the respondent was attempting
to game the system with successive applications in a bid to put the appellant to significant
costs and swamp the appellant in the market place. Therefore, there was no evidence of bad
faith.
9. Summary of the judgment
The appellant, Ms. Hosking, began trading under the name TomTom in 1998 and was theregistered owner of the TOM TOM mark. TomTom Communications was incorporated in 2001
and had used the mark under license since then. It provided a number of services such as
public relations, media strategies, communications, promotion and branding advice.
The respondent was a global company head-quartered in the Netherlands that provides
navigation and mapping products and services. The respondent began selling portablenavigation devices in New Zealand in 2007 and quickly began to expand the goods and services
it provided to the New Zealand market.
The appellant alleged, among other grounds of opposition, that the respondent’s application
had been made in bad faith. This allegation was based on the fact that the respondent applied
to register that same marks in 2006 and 2007 only to withdraw the applications following
263

opposition from the appellants and then go on to make the application for which this case wasconcerned. The appellant alleged bad faith arose from the abandonment and re-filing for thesame core goods and services with knowledge that there was a significant amount of evidence
of deception and confusion and the new application failed to address these issues. It wasalleged the respondent was aware that it would benefit from filing new applications by putting
the appellants to significant cost and swamping the appellants in the market place due to the
respondent’s size and resources.
The Court agreed with the Assistant Commissioner’s earlier finding that there was noevidence to justify the inference that the appellant was relying on. There was no evidential
basis for the contention that the respondent was attempting to game the system with its
successive applications.
10. Tags
Appealofdecisiontorespondent’s applications.
Unsuccessful① Type of trial② Decision③ Type of bad faithFree Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use✓

Others

264

grant

v
1. Title

ZOGGS INTERNATIONAL LTD V SEXWAX INC

2. Country

New Zealand3. Court

High Court, Wellington

4. Case No.

[2013] NZHC 1494

5. Date of the judgment

2013/6/20

6. Parties: Appellant
Respondent

ZOGGS INTERNATIONAL LTD
SEXWAX INCORPORATED

7. Mark

Appellantmark)(disputed

trade Respondent

8. Outline of the case
An appeal against the decision of the Assistant Commissioner, who ruled that appellant’s
application had been made in bad faith. The appellant was successful in overturning thisdecision and it was held that the application had not been made in bad faith as there was noevidence to show that there was any arrangement between the appellant and the respondentthat the application at issue could have breached. The Court found that at most the evidence
was indicative of communications made on which there was no reliance or change of position.
9. Summary of the judgment
The respondent trades as its primary product Mr Zog’s Sex Wax which was held to have areputation in the surfing market in New Zealand. The respondent’s owner deposed that he had
used the name Zog in connection with this business for 38 years.
The appellant was established in Australia in 1992 and originally sold swimwear goggles with
the name Zoggs being an abbreviation of googles. From 1994 the goggles were sold in New
Zealand. The appellant then began manufacturing and marketing swimwear aimed at therecreational swimming pool market under the name “Zoggs Toggs” and eventually as Zoggs.
The appellants application in dispute was for the registration of Zoggs in class 25 to replace theZoggs Toggs mark.

265

The Assistant Commissioner had upheld the respondent’s objection to the appellant’s
application on the basis that, among other things, it was made in bad faith.
The respondent’s allegations of bad faith were based on several underlying facts. In 1992, theappellant had approached the respondent prior to its Australian registration for goggles toobtain an agreement that the respondent would not oppose the registration. The respondent
alleged that as the appellant had at that time promised to limit its products to swimming
goggles it did not oppose the initial registration in class 9. Despite this and assurances that
ZOGGS would not be used in relation to surfing, the respondent alleged that the applicationand further investigations showed that this was not true and this amounted to bad faith.
The appellant argued that the 1992 conversation was concerned with Australia only, that a2009 assurance that it would not move into the surfing items covered by class 25 related only
to its proposed US application and that no formal agreement ever existed that it would limit its
goods and business reach and inform the respondent of developments. The AssistantCommissioner found that the appellant had made the application in bad faith because it had
been aware since 1992 of the respondents branding, that the respondent believed until 2007
that the appellant would limit its ZOGGS trade mark to swimming goggles as agreed in the
1992 agreement, and that before filing in New Zealand, the appellant had indicated that the
ZOGGS brands would not be used in relation to surfing products in class 25.
The Court allowed the appeal against the finding of bad faith. The Court found that theAssistant Commissioner was wrong to hold that the 2009 email related strictly to the ZOGGS
brand and not strictly the appellants US application. Furthermore, the email was not in fact
relied on by the respondent. The Court held that an offer made during negotiations which is
not accepted cannot be held to be binding on the appellant so as to support a finding of bad
faith for acting against it. The Court also found that the 1992 agreement did not suggest it
went beyond the Australian application. Ultimately, there was no evidence to show that there
was any arrangement between the appellant and the respondent that the application at issue
could have breached. The Court found that at most the evidence was indicative ofcommunications made on which there was no reliance or change of position (except the 1992
registration).

10. Tags
Appealofdecisiontorespondent’s applications.

① Type of trial
266

grant

Unsuccessful② Decision③ Type of bad faithFree Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use✓

Others267

THE COOK
COOK BROTHERS INTERNATIONAL LTD V ORARI STREET

1. Title

PROPERTIES INVESTMENTS LTD

2. Country

New Zealand3. Court

Intellectual Property Office

4. Case No.

[2014] NZIPOTM 9

5. Date of the judgment

2014/2/17

6. Parties: Applicant

COOK BROTHERS INTERNATIONAL LTD

Opponent
7. Mark

ORARI STREET PROPERTIES INVESTMENTS LTD
Applicant(disputed

trade Opponent

mark)

THE COOK

8. Outline of the caseA case where the applicant applied to register a trade mark for a tavern. The application wasmade in bad faith as it was not the owner of the trade mark at the time and it would deprive
the owner of the mark of the benefit of the registration.
9. Summary of the judgment
The Opponent had purchased a building which was trading as The Captain Cook Tavern. The
building was subject to a lease. Two companies, DB Breweries Limited and Stab in the Dark
Limited, entered into a sublease for the premises and eventually, upon the ending of theearlier lease, DB Breweries entered into a new lease for the premises on its own. The
Applicant later purchased the business of the Captain Cook Tavern from DB Breweries. The
Applicant believed this included the trade mark but later discovered the mark was notregistered and accordingly applied to register it. The Applicant maintained that when thelease was due to expire it was looking for a solution that would allow it or a new owner tooperate the business but could not find a resolution. It then considered options such as using
the Cook brand at a new premises or selling it. The Applicant maintained that simply owning
the building did not give the Opponent the right to the trade mark and such a matter shouldhave been stipulated in the lease agreements. The Opponent submitted that the application
was made in bad faith because the Applicant was not the proprietor of the mark and the268

application was made to block other traders and prevent such a trader from using the mark at
the premises of The Cook. The Opponent alleged that the Applicant had knowledge at the timeof application that it would be unable to continue to occupy the premises of The Cook/The
Captain Cook.

The Examiner held that the application was made in bad faith. This was based on a number offindings. The Examiner found that the applicant was not the owner of the opposed mark as
Stab in the Dark Limited had a prior assertion to ownership and the applicant was notincorporated as a company at the time it bought the Tavern and alleged to have gained therights to the mark. The Examiner found that Stab in the Dark Limited was operating theTavern not the applicant and it did not consent to the sale of the Tavern nor to the trade markapplication. Ultimately, registration of the mark would deprive Stab in the Dark Limited of
the benefit of the registration of the opposed mark. The Examiner found that in thosecircumstances, the conduct of the applicant was short of reasonable standards of commercial
behavior and was, therefore, made in bad faith.
10. Tags(1) Type of trial

Opposition of registration of trade mark(2) Decision

Successful(3) Type of bad faithFree Ride
Imitation by agents or people who have a prior ✓relationship
Interference by a competing company
Lack of intention to use
Others269

CLIMATE PRO v CLIMATE PRO
1. Title

SAFE–R INSULATION (NZ) LTD V JOHNS MANVILLECORPORATION

2. Country

New Zealand3. Court

Intellectual Property Office

4. Case No.

[2014] NZIPOTM 20

5. Date of the judgment

2014/4/29

6. Parties: Applicant

JOHNS MANVILLE CORPORATION

Opponent
7. Mark

SAFE-R INSULATION (NZ) LTD
Applicant

Opponent (disputed trade mark)

CLIMATE PRO
CLIMATE PRO(Common law right)

8. Outline of the caseA case where the opponent registered CLIMATE PRO in relation to insulation products afterits distributorship relationship ended with the applicant. It was held that the opponent musthave known of the rights the applicant had in the mark and that it would block the applicant
from the benefit of registration and disrupt the applicant’s business. The applicant was
successful in its argument that the application was made in bad faith.
9. Summary of the judgment
The applicant had been selling insulation products in New Zealand through distributors,
including those branded CLIMATE PRO. It was the owner at common law of the CLIMATE
PRO trade mark in relation to residential insulation in New Zealand. The opponent, who was
the owner of the trade mark at issue, had been since 1998 a distributor of the applicant’s
CLIMATE PRO products in New Zealand. The opponent ceased to be the distributor by, at thelatest, 5 September 2012. On that date the opponent applied to register the trade mark
CLIMATE PRO in New Zealand and sought to negotiate new terms with the applicant. The
applicant alleged that after registration the opponent threatened the applicant’s other New
Zealand distributor with an allegation it was infringing the CLIMATE PRO mark. The
applicant alleged that as the opponent had been distributing the applicant’s products it New
Zealand it could not claim to be the owner of the CLIMATE PRO mark.
The Assistant Commissioner agreed with these facts and held that due to the relationship270between the parties, the opponent knew of the applicant’s ownership of the CLIMATE PRO
mark and ought to have known that registration of the CLIMATE PRO mark would deprive
the applicant of the benefit of registration and disrupt the applicant’s business. The AssistantCommissioner found that the opponent’s application for registration of the CLIMATE PRO
mark was conduct that fell short of reasonable standards of commercial behavior and wasmade in bad faith.
10. Tags(1) Type of trial

Application
invalidity(2) Decision

Successful(3) Type of bad faithFree Ride
Imitation by agents or people who have a prior ✓relationship
Interference by a competing company
Lack of intention to use
Others271

fordeclarationofand MSpav

MSpa

BAKER V ORIENTAL RECREATIONAL PRODUCTS (SHANGHAI)

1. Title

CO LTD

2. Country

New Zealand3. Court

Intellectual Property Office

4. Case No.

[2016] NZIPOTM 15

5. Date of the judgment

2014/4/29

6. Parties: Applicant

ORIENTAL RECREATIONAL PRODUCTS (SHANGHAI) CO LTD

Opponent
7. Mark

PAUL BAKER

Applicant

Opponent (disputed trade mark)

MSpa

And
MSpa

8. Outline of the caseA case where the applicant sought a declaration of invalidity due to, among other grounds, theapplication being made in bad faith. It was held that the application had been made in bad
faith as the opponent knew at the time of registration that the applicant used themark for the relevant goods. Ignorance as to the illegality of his actions was not enough to stopthat conduct from being below the reasonable standards of commercial conduct.
9. Summary of the judgment
The applicant had sold portable spa pools under the MSpa trade mark in New Zealand since2007. It had registered trade marks in a number of countries worldwide. It alleged that it had
approached the opponent through an intermediary in 2012 with the intention to secure him asa partner to handle the after sales service in New Zealand. The opponent filed the trade markapplication in question four days before initial contact with the applicant. The parties
subsequently signed an agreement authorizing the opponent’s company as the authorized
sales agent for the applicant’s products.

The opponent’s evidence could not be admitted. However, it could be determined that the
opponent claimed to have taken what he described as a prudent business decision to protect
the applicant’s intellectual property and marketing investment by registering the trade mark272

in dispute.

The Assistant Commissioner held that at the time of the application for registration the
opponent knew that the applicant used the trade markfor the goods that he wasintending to distribute. The Assistant Commissioner acknowledged that the opponent may nothave known that the intellectual property in the trade mark was owned by the applicant andthat it was not open to him to assert ownership. However, the fact that the opponent may havethought that his actions were acceptable was not a defence of the conduct that fell below thereasonable standards of commercial conduct. The Assistant Commissioner found that the
opponent had acted in bad faith in making the application.
10. Tags① Type of trial

Application
invalidity② Decision

Successful③ Type of bad faithFree Ride
Imitation by agents or people who have a prior ✓relationship
Interference by a competing company
Lack of intention to use
Others273

fordeclarationofECOTRICITY V ECOTRICITY
1. Title

YATES V ECOTRICITY GROUP LTD

2. Country

New Zealand3. Court

Intellectual Property Office

4. Case No.

[2018] NZIPOTM 3

5. Date of the judgment

2018/1/12

6. Parties: Applicant
Owner

Ecotricity Group Ltd
Alistair Yates

7. Mark

Applicant

Owner (disputed trade mark)

ECOTRICITYECOTRICITY

8. Outline of the caseA case in which the owner’s registered trade mark was directed to stay on the register and theapplicant’s application for a declaration of invalidity was declined as the grounds for a breachof faith were not made out.
9. Summary of the judgment

274

The applicant was a British renewable energy generator and supplier. The applicant had
applied for a New Zealand trade mark for ECOTRICITY but had been blocked by the owner’s
registered mark.
The owner was the co-founder of the New Zealand company Ecotricity Limited which retailed
renewable energy to commercial and residential customers in New Zealand. The owner owned
the New Zealand trade mark ECOTRICITY.
The applicant alleged that, in addition to the owner’s mark being likely to confuse or deceive
customers, the owner’s mark had been made in bad faith. This was based on allegations thatthe owner had sought from the applicant, and been refused, permission to register the
ECOTRICITY mark in New Zealand and had sought to obtain without payment the applicant’s
trade mark, business model, materials and association.
The applicant’s claim was not made out. It was held that there was no real evidence of bad
faith. The owner’s evidence was that he had come up with the mark independently. The
Assistant Commissioner held that even if the owner had not come up with the markindependently, this alone would not have been enough to establish bad faith. The AssistantCommissioner further held that contact between the parties that occurred six months after theowner’s application for the trade mark (and 12 days after its acceptance) was not evidence ofan intention to obtain the mark in bad faith and was nothing more than an intention by theowner to cooperate for mutual benefit. It was held that the owner’s conduct was not evidence of
dealings that fall short of reasonable standards of commercial behavior (the relevant test in
New Zealand).
10. Tags① Type of trial

Application for declaration of invalidity② Decision

Unsuccessful③ Type of bad faithFree Ride
Imitation by agents or people who have a prior ✓relationship
Interference by a competing company
Lack of intention to use
Others275

PAKISTAN
Power Sonic v Power Sonic
1. Title

Javed Akhtar Chauhan v JKS (Private Limited) and others

2. Country

Pakistan

3. Court

High Court of Sindh

4. Case No.

H.C.A No. 357 of 2015

5. Date of the judgment

2016/06/08

6.

Javed Akhtar ChauhanParties:
Plaintiff

JKS (Private Limited) and others

Defendant
7. Mark

Plaintiff

Defendant (disputed trademark)

Power
Sonic

Power Sonic

8. Outline of the caseA case in which the Plaintiff’s registered trademark was determined as having been obtained
contrary to the ethics of business and liable to cause confusion with goods connected with anotherperson’s business.
9. Summary of the judgment
The Appellant established a business relationship with Power Sonic Corporation, a US-based
company (“the Company”) in 2002. The Appellant was the distributing agent of the Company’s
batteries. Counsel for the Company stated that sometime in 2011, the Appellant started delaying
payments to the Company and eventually stopped paying them altogether. The Company thenappointed JKS Private Limited (the Respondent No. 2) as their official distributor in 2013. During
this time, the Appellant registered a mark identical to the Company’s mark. Based on thisregistration, the Appellant sought an injunction from the Court against the import of theCompany’s goods. This was the first time that the Company became aware of the Appellant’s
registration (a colorful imitation of the Company’s mark). As a countermeasure, the Company
made an application through Respondent No. 2 asking for a declaration against the deceptively
similar mark. The Learned Single Judge refused to grant the Appellant’s injunction application
and allowed the Company’s application for declaration against the local registration of their
Trademark. The Appellant then appealed. The Court, after listening to both sides, concluded that
this was a simple case of dishonest adoption and cited sub-section (4) of Section 14 of the 2001
276

Ordinance stating that applications for registration of a trademark which were made in bad faithhave to be Power Sonic refused by the Trademarks Registry.
10. Tags① Type of trial

Suit for trademark infringement andpassing off①Decision

Appeal③ Type of bad faithFree Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others277✓

PARAGUAY
CHOCOCHIPS vs. CHOCOCHIPS
1. Title

EL TRIGAL S.A. vs. BAGLEY ARGENTINA S.A. ON NULLITY OF
TRADEMARK REGISTRATION

2. Country

Paraguay

3. Court

Final Judgement: Supreme Court of Justice

4. Case No.
5. Date of the judgment

June 23rd, 2006

6. Parties: Plaintiff

El Trigal S.A.

Defendant
7. Mark

Bagley Argentina S.A.
Plaintiff (disputed trademark)Defendant

CHOCOCHIPS

CHOCOCHIPS

8. Outline of the case
9. Summary of the judgment
On date June 23rd, 2006, EL TRIGAL S.A. filed a nullity action against Trademark Registration No.
290.090,
trademark “CHOCOCHIPS”, in the name of BAGLEY ARGENTINA S.A. Said Company allegedthat it was the owner of such mark in its country of origin, Uruguay, as of the date September 27th,
1988, and that the same had made its trademarks known (advertised) by different means and had
utilized its trademark since 1986 in Uruguay and in other countries.
The Claimant also sustained that the mark CHOCOCHIPS was notorious in Paraguay since its
first import in the year 2004, and also that the mark was registered in several countries, including
Paraguay; however, suchregistration had lapsed by the time the trademark in the name BAGLEY ARGENTINA S.A. wasregistered and the nullity action was filed. According to the Claimant, such a slip (namely, thenon-renewal of the trademark) was taken advantage of by the Defendant, who in bad faith,registered the trademark in its own name.
The Defendant responded to the Claimant’s action alleging that TRIGAL S.A. was not the creatorof the mark CHOCOCHIPS given the fact that the Defendant itself, BAGLEY ARGENTINA S.A.,
had had the trademark registered since the year 1980. The firm also alleged that the same had notacted “in bad faith”, due to the fact that it had applied for registration of the mark three years after
278

the registration of the name of EL TRIGAL S.A. had lapsed.
The court determined that what was to be resolved was the following: 1) Which firm had thebest right to the mark; and 2) Whether the Defendant had acted in bad faith upon registrationof the mark.
After analyzing the applicable legislation, the doctrine and the evidentiary material submitted
during the case, the Court concluded that, undoubtedly and unmistakably, EL TRIGAL S.A. was
the original owner of the mark CHOCOCHIPS.
The Court placed particular importance on the provisions of the Paris Convention and the fact that
EL TRIGAL
S.A. had already made consistent and continuous use of the trademark throughout the Paraguayan
territory.
The nullity action was accepted due to the fact that the Claimant proved that it had a betterrights over the term CHOCOCHIPS due to the fact that the firm was the legitimate owner in its
country of origin. Even though the registration had lapsed in Paraguay, it had still been usedwithout opposition in businesses related to the field. Such circumstances should have been
known by the Defendant and proved its lack of good faith.
The Resolution was revoked by the Civil Court of Appeals but confirmed by the Supreme Court ofJustice.
10. Tags① Type of trial② Decision③ Type of bad faithFree Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others

279

✓

PERU
BIOTRONIK v. BIOTRONIK
1. Title

Opposition filed by BIOTRONIK SE & Co. KG against trademark
application"BIOTRONIK" (word mark) in the name of Flores Haboud Tamer Ricarte
Peru

2. Country
3.

Competent

authorityPeruvian Trademark Office(administrative
proceeding)
4. Case File No.

616641-2015

5. Date of the decision

2015/12/23

6. Parties: Applicant

FloresOpponent
7. Mark

HaboudTamer

RicarteBIOTRONIK SE & Co. KG
Applicant (disputed trademark)Opponent

BIOTRONIKBIOTRONIK

8. Outline of the case
The opponent, a German manufacturer of cardio- and endovascular medical devices, was theowner of the trademark BIOTRONIK in various countries around the world, including the US
and several countries of the European Union. Until the 1st April 2015 the authorized
distributor of the opponent in Peru was BIOMEDICAL DISTRIBUTORS S.A.C. –BIOMEDIST,

and

even

thoughthecommercial

relationshipwith

BIOMEDICAL

DISTRIBUTORS S.A.C. – BIOMEDIST had been terminated by the opponent, the Applicant,
who was the general manager of BIOMEDICAL DISTRIBUTORS S.A.C. – BIOMEDIST, filed –without any authorization by the opponent – an application for the trademark BIOTRONIK in
his own name.
The Applicant’s trademark BIOTRONIK was opposed, among others, on the grounds of bad faith/unfair competition in the sense that the Applicant’s mark was filed in bad faith with the evident
purpose of
appropriating the mark of a third party with full knowledge of the fact that said mark was of a third
party’s property.
9. Summary of the judgment
The Peruvian Trademark Office determined that from the evidence provided by the opponent, it
had been proven that the Applicant’s act, in particular the filing of the application for the280

“BIOTRONIK” trademark, evidenced bad faith and was to be regarded as an intent to perpetrate,facilitate or consolidate acts of unfair competition.
According to the Peruvian Trademark Office, the Applicant did file the application for the“BIOTRONIK”
trademark with the evident purpose of appropriating the mark of a third party in full knowledgeof the fact that said mark was of a third party’s property.
Furthermore, in its decision, the Peruvian Trademark Office also pointed out that the
Applicant did file the application for the “BIOTRONIK” trademark, taking advantage of apreexisting business relationship with
BIOTRONIK SE & Co. KG, and in doing so the Applicant was seeking to appropriate a sign thatwas liable to be confused with the one previously held by BIOTRONIK SE & Co. KG.
10. Tags① Type of trial

Trademark opposition brought before the
Peruvian Trademark Office throughadministrative proceeding② Decision

Refusal of trademark application③ Type of bad faithFree Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others281✓

v.
1. Title

Opposition filed by P. F. Chang’s China Bistro, Inc. against trademark
application “P.F. CHANG’S” and logo (composite mark) in the name of
Veronica Pflucker Pinillos

2. CountryPeru

3. Competent authority Peruvian Trademark Office(administrative
proceeding)
4. Case File No.

456557-2011

5. Date of the decision

2012/05/28

6. Parties: Applicant

Veronica Pflucker Pinillos

Opponent
7. Mark

P. F. Chang’s China Bistro, Inc.
Applicant (disputed trademark)Opponent

8. Outline of the case
The opponent, a known American restaurant chain with more than 200 restaurants worldwide,
was the owner of the trademark P.F. CHANG’S in various countries around the world, including
the US. The Applicant filed in her own name a trademark that, in an identical manner,reproduced the words and graphical elements of the opponent’s registered mark, identifying thesame services that were covered by the opponent’s registered mark.
The Applicant’s trademark, P.F. CHANG’S, was opposed, among others, on the grounds ofbad faith/ unfair competition in the sense that the Applicant’s mark was filed in bad faithwith the evident purpose of appropriating the mark of a third party in full knowledge of thefact that said mark was of a third party’s property.
9. Summary of the judgment
The Peruvian Trademark Office determined that from the material provided by the opponent it
was proven that the Applicant’s act, in particular the filing of the application for the P.F.
CHANG’S trademark, evidenced bad faith.

282

The position of the Peruvian Trademark Office was that there was sufficient evidence indicatingthat by the time the Applicant filed the application for P.F. CHANG’S trademark, the Applicant
may have had previous
knowledge of the existence of the opponent’s trademark P.F. CHANG’S, and also may have known
that the identity between the conflicting marks was not the result of mere coincidence. According
to the Peruvian Trademark Office, the Applicant’s filing of a trademark that, in identical manner,reproduced the words and graphical elements of the opponent’s registered mark was intended tocause harm to the opponent, since the evident purpose was to appropriate the mark of a third
party.
Further, the decision to reject the trademark applied for was sustained based on the factthat the Peruvian Trademark Office had determined that the Applicant’s trademark did
affect the existing copyrights of P. F. Chang's China Bistro, Inc.
10. Tags① Type of trial

Trademark opposition brought beforethePeruvian
Trademark
Officethrough administrative proceeding② Decision

Refusal of trademark application③ Type of bad faith✓Free Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others283

v.
1. Title

Nullity action filed by Panasonic Corporation against trademark
registration “PERUSONIC” and logo (composite mark) in the name ofVideo Disc Center S.R.L.

2. Country
3.

Peru

Competent

authority
Peruvian Trademark Office(administrative
proceeding)
4. Case File No.

383137-2009

5. Date of the decision

2014/03/31

6. Parties: Petitioner

Panasonic

Defendant

Video

Corporation

Disc

Center

S.R.L.
7. Mark

Defendant (disputed trademark)

Petitioner

8. Outline of the case
The Petitioner, one of the leading manufacturers of batteries in the world, was the owner of several
trademarks that include the term PANASONIC to identify Class 9 goods, among other batteries.
The Petitioner was also the owner of the well-known trademark PANASONIC (whose well-known
statushas

beenacknowledged

by

the

Peruvian

Trademark

Officevia

Resolution

622-2005/INDECOPI, dated 14th June 2005). For many years the Petitioner had been using thecolors yellow and green to identify batteries and the packaging thereof. The
Defendant was an importer of batteries PERUSONIC. Previously, the Defendant distributed
batteries branded with the mark PANASONIC.
The Petitioner filed a nullity action against trademark registration N° 117398 “PERUSONIC” andlogo (composite mark) owned by the Defendant on the grounds of bad faith.
9. Summary of the judgment

284

The Peruvian Trademark Office determined that there was sufficient evidence indicating that by
the time the
Defendant applied for the registration of the mark PERUSONIC, the Defendant knew of theexistence of thePetitioner’s trademark PANASONIC, given the fact that the mark PERUSONIC imitated, in an
identical manner, the graphic design and color composition of the PANASONIC mark, and identified
in the same Class 9 of goods (batteries), was not the result of mere coincidence. The Defendantobtained registration of the mark
PERUSONIC with clear intention to cause harm to the commercial activities of the Petitioner in
the Peruvian
market, evidencing bad faith.
According to the Peruvian Trademark Office, from the available material, it had been proven thatthe Defendant acted in bad faith.
10. Tags
Nullity action brought before the
Peruvian Trademark Office throughadministrative proceeding
Nullification of trademark registration① Type of trial② Decision③ Type of bad faith✓Free Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others285

PHILIPPINESLE CORDON BLEU ECOLE DE CUISINE MANILLE vs.
1. Title

ECOLE DE CUISINEPHILIPPINES),

MANILLE(CORDON

BLEU

OF

THE

2. Country

INC. vs. RENAUD COINTREAU & CIE and LE CORDON BLEU
INT’L., B.V.
Philippines

3. Court

Supreme Court of the Philippines

4. Case No.

G.R. No. 185830

5. Date of the judgment

June 5, 2013

6. Parties: Petitioner

Ecole

Respondents

De

CuisineManille(Cordon

Bleu

of

the

Philippines), Inc. Renaud Cointreau & CIE and Le Cordon
Bleu Int’l., B.V.

7. Mark

Petitioner

LE

Respondents
trademark)

CORDON(disputed

BLEU

ECOLE DE CUISINEMANILLE

8. Outline of the caseIn this case, the Petitioner filed an opposition to the trademark application of the Respondent forthe mark “LE CORDON BLEU & DEVICE”, claiming that it was the owner and first user in thePhilippines of the subject mark. The Petitioner likewise argued that the Respondents’ use of thesubject mark would create confusion for consumers as well as cause injury and damage to its
business reputation. The Petitioner was the alleged senior user of the trademark since 1948.
9. Summary of the judgment
The Respondents filed applications and registrations of the trademark “LE CORDON BLEU &DEVICE” in various jurisdictions, including the Philippines in 1990. The Respondents were
likewise the owners of LE CORDON BLEU, a culinary school of worldwide acclaim, having
trained students from more than 80 nationalities, including the directress of the Petitioner.
When the opposition was filed, the Petitioner had no existing application or registration of the“LE CORDON BLEU” mark. In fact, its application for the “LE CORDON BLEU ECOLE DE
CUISINE MANILLE” mark was only filed in 1992, or after the Respondents’ application.

286

The Supreme Court, adopting the previous decisions of the Court of Appeals and the Office of the
Director
General of the Intellectual Property Office, held that the Respondents’ right to register the subject
mark could not be barred by the Petitioner’s alleged prior use thereof as early as 1948 for its
culinary school LE CORDONBLEU MANILLE in the Philippines because its appropriation of the mark was done in bad faith.
Furthermore, at the time when the opposition was filed, the Petitioner had no certificate ofregistration that would put the Respondents on notice that the former had appropriated or had
been using the subject mark.

The Respondents were proven to be the true and lawful owners of the subject mark and thus
entitled to have the same registered under theirs name. The Respondents’ Le Cordon Bleu
culinary school had been using the subject mark in France since 1895, prior to Ecole’s averredfirst use of the same in the Philippines in 1948. In fact, Ecole’s directress had trained in
Cointreau’s Le Cordon Bleu culinary school in Paris, France.
10. Tags
Opposition
toatrademarkapplication
Allowed registration of the trademark① Type of trial② Decision③ Type of bad faith✓Free Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others287

vs.
1. Title

FREDCO MANUFACTURING CORPORATION vs. PRESIDENT AND
FELLOWS OF HARVARD COLLEGE (HARVARD UNIVERSITY)

2. Country

Philippines

3. Court

Supreme Court of the Philippines

4. Case No.

G.R. No. 185917

5. Date of the judgment

June 1, 2011

6. Parties: Petitioner

Fredco Manufacturing Corporation

Respondent
7. Mark

President and Fellows of Harvard College (Harvard University)
Petitioner

Respondent (disputed trademark)8. Outline of the caseIn this case, the Petitioner filed a petition for cancellation of the registered trademark,“HARVARD VE RI TAS SHIELD SYMBOL”.
9. Summary of the judgment
The mark “HARVARD” was a well-known name and mark internationally, including in thePhilippines. The Respondent’s “HARVARD” mark was rated as one of the most famous marks in theworld and had beenregistered in at least 50 countries. The mark had established a considerable goodwill worldwide
since the founding of the Respondent’s school, Harvard University, more than 350 years ago. Thus,
it was easily
recognizable as the trade name and mark of Harvard University of Cambridge, Massachusetts,
USA, which is one of the leading educational institutions in the world. As such, even before
Harvard University applied for registration of the mark “HARVARD” in the Philippines, the mark
was already protected under Art. 6bis and 8 of the Paris Convention.
Fredco’s registration of the “HARVARD” mark and its identification of origin as from “Cambridge,
Massachusetts” falsely suggested that Fredco or its goods were connected with the well-known
institution Harvard University, where there was no connection whatsoever. Thus, Fredco’s
registration of the mark in 1988 should not have been allowed in the first place. Add to that thefact that Fredco’s registration of the “HARVARD” mark was already cancelled in 1998 when it
288

failed to file the required affidavit for use of the continued registration of its mark. Hence, at thetime of filing of Fredco’s Petition for Cancellation,Fredco was no longer the registrant or presumptive owner of the mark “HARVARD”.
Based on the above arguments, the Supreme Court denied Fredco’s petition for cancellation andruled that being a well-known name and mark, Harvard University had exclusive ownership overthe subject mark to the exclusion of all others.
10. Tags① Type of trial

Petition for cancellation of trademark
registration② Decision

Denied petition for cancellation of
trademark registration③ Type of bad faith✓Free Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others289

,vs. Birkenstock

1. Title

BIRKENSTOCK ORTHOPAEDIE GMBH AND CO. KG (formerly
BIRKENSTOCK ORTHOPAEDIE GMBH vs. PHILIPPINE SHOEEXPO MARKETING CORPORATION

2. Country

Philippines

3. Court

Supreme Court of the Philippines

4. Case No.

G.R. No. 194307

5. Date of the judgment

November 20, 2013

6. Parties: Petitioner

Birkenstock Orthopaedie GMBH and Co. KG (formerly Birkenstock
Orthopaedie GMBH)

Respondent
7. Mark

Philippine Shoe Expo Marketing Corporation
Petitioner (disputed trademarks)

Respondent

Birkenstock

8. Outline of the caseIn this case, Philippine Shoe Expo filed notices of opposition against the trademark application of
Birkenstock Orthopaedie for the trademarks “BIRKENSTOCK” and “BIRKENSTOCK BAD
HONNEN-RHEIN&

DEVICECOMPRISING

OF

ROUND

COMPANYSEALAND

REPRESENTATION OF A FOOT, CROSS AND SUNBEAM”.
9. Summary of the judgment
In this case, Petitioner Birkenstock Orthopaedie was able to establish that it was the true andlawful owner of the mark “BIRKENSTOCK” as it submitted evidence related to the history andorigin of “BIRKENSTOCK” and its use of the name and mark in commerce since its first adoptionin Europe in 1774, long before the Respondent was able to register the same in the Philippines. The
subject marks had also been registered by the Petitioner in various countries worldwide.
In contrast, the Respondent, aside from its cancelled registration for the mark “BIRKENSTOCK”(due to failure to file the required declaration of actual use), presented only sales invoices andadvertising materials, which were not conclusive evidence of its claim to ownership of the mark
“BIRKENSTOCK”.
290

In view of the foregoing, the Supreme Court found Petitioner Birkenstock Orthopaedie to be thetrue and lawful owner of the mark “BIRKENSTOCK” and that it was entitled to its registration,and that Respondent Philippine Shoe Expo acted in bad faith by registering in its name, especiallywhen the same was used for similar goods.
10. Tags① Type of trial

Consolidated Oppositions
trademark applications② Decision

Allow registration of trademarks③ Type of bad faith✓Free Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others

291

to

the

IN-N-OUT BURGER vs. IN N OUT
1. Title

IN-N-OUT BURGER, INC. vs. SEHWANI, INCORPORATED AND/OR
BENITA’S FRITES, INC.

2. Country

Philippines

3. Court

Supreme Court of the Philippines

4. Case Nos.

G.R. Nos. 171053 and 179127

5. Date of judgments

15 October 2007 and 24 December 2008

6. Parties: Petitioner

IN-N-OUT BURGER, INC.

Respondents
7. Mark

SEHWANI, INCORPORATED AND/OR BENITA’S FRITES, INC.
(licensee of Sehwani)
Petitioner

Respondents (disputed trademark)8. Outline of the caseIn this case, IN-N-OUT Burger, Inc. filed a complaint for unfair competition and cancellationof trademark registration against the “IN N OUT” mark registered under the name of
Respondent Sehwani Incorporated.
9. Summary of the judgment
The Supreme Court, in affirming the judgment of the Office of the Director General of theIntellectual Property Office against the Respondent, discussed that it could not give credence to
the Respondent’s claims of good faith and that they had openly and continuously used the subject
mark since 1982. In fact, the Respondent had the burden of proof to show that it had no fraudulent
intent to use the “IN-N-OUT” mark. However, no evidence of prior use, as early as 1982, wasprovided.
Furthermore, Respondent failed to explain why they were using the marks of the Petitioner,
particularly “DOUBLE DOUBLE” and “IN-N-OUT Burger and Arrow Design”. The wrappers,
receptacles and receipts of the Respondent also used the “IN-N-OUT” mark of the Petitioner. These
acts clearly showed bad faith on the part of the Respondent.
In addition, IN-N-OUT-Burger, Inc. was the true and lawful owner of the subject mark given theworldwide registration of the “IN-N-OUT” mark. Moreover, the IPO had already declared in a292

previous inter partes cases that the “IN-N-OUT BURGER AND ARROW DESIGN” mark ofPetitioner was an internationally well-known mark. Thus, IN-N-OUT-Burger, Inc. had the right touse its tradename and mark “IN-N-OUT” in the Philippines to the exclusion of all others.
On the matter of unfair competition, it was held that the Respondent Sehwani’s use of “IN-N-OUT
BURGER” in business signages, when it had registered with the IPO as the mark “IN N OUT”,
revealed fraudulent intent to deceive purchasers, especially since they were engaged in the same
industry. The Respondent was also giving their products a similar appearance that would likely
influence purchasers to believe that their products were those of the Petitioner. From the above, it
could not be doubted that the Respondent was unlawfully using and appropriating the“IN-N-OUT” mark.
10. Tags① Type of trial

Complaint for unfair competition andCancellation of trademark registration② Decision

Guilty of unfair competitioncancellation of registration③ Type of bad faith✓Free Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others293

andBIG MAC vs. BIG MAK
1. Title

MCDONALD’SCORPORATIONandMCGEORGE
FOOD
INDUSTRIES, INC. vs. L.C. BIG MAK BURGER, INC., FRANCIS B.
DY, EDNA A. DY, RENE B. DY, WILLIAM B. DY, JESUS AYCARDO,
ARACELI AYCARDO and GRACE HUERTO

2. Country

Philippines

3. Court

Supreme Court of the Philippines

4. Case No.

G.R. Nos. 143993

5. Date of judgment

August 18, 2004

6. Parties: Petitioners

MCDONALD’SCORPORATION
INDUSTRIES, INC.

Respondents

7. MarkandMCGEORGE

FOOD

L.C. BIG MAK BURGER, INC., FRANCIS B. DY, EDNA A. DY, RENE
B. DY, WILLIAM B. DY, JESUS AYCARDO, ARACELI AYCARDO andGRACE HUERTO
Petitioners
Respondents (disputed trademark)BIG MAK8. Outline of the caseIn this case, McDonald’s Corporation and its Philippine franchisee, McGeorge Food Industries, Inc.,
filed a complaint for trademark infringement and unfair competition against L.C. Big Mak Burger,
Inc. and its incorporators, since the registration application for the mark “BIG MAK” was acolorable imitation of
McDonald’s registered “BIG MAC” mark for the same food products.
9. Summary of the judgment
Respondents’ use of the aurally and visually similar “BIG MAK” mark on hamburgers, and evenon non- hamburger food products, could not excuse their infringement of McDonald’s registered“BIG MAC” mark.
McDonald’s promotion of its “BIG MAC” mark had built goodwill and reputation for its mark,being one of the easily recognizable marks in the market. This fact, thus, increased the likelihoodthat consumers would mistakenly associate McDonald’s hamburgers and business with those of
L.C. Big Mak and its “BIG MAK” mark.
On the issue of unfair competition, since L.C. Big Mak chose to use the “BIG MAK” mark on
hamburgers, the latter had obviously clothed their goods with the general appearance of
McDonald’s goods. In fact, there was also no notice to the public that the “BIG MAK” hamburgers
were products of the Respondents, and not those of the Petitioners who had exclusive use of the294

“BIG MAC” mark. This act alone showed Respondents intent to deceive the public. Thus the
Respondents were also liable for unfair competition.
10. Tags① Type of trial

Complaintfor
trademarkinfringement and unfair competition② Decision

Guilty of trademark infringement
and unfair competition③ Type of bad faith✓Free Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others295

RUSSIA
CRISTAL v. CRISTALINO
1. Title

CRISTAL v. CRISTALINO

2. Country

Russia3. Court

The Supreme Court of the Russian Federation after consideration of thedecision

4. Case No.

of the Intellectual Property Rights Court
SIP-427/2016

5. Date of the judgment

2017/04/26

6. Parties: Plaintiff

Champagne

Defendant
7. MarkLouis

Roederer

LLC “NORDEX”
Plaintiff

Defendant (disputed trademark)8. Outline of the caseA case in which the Defendant’s registered trademark was determined to be liable to cause
confusion with goods connected with another person’s business.
9. Summary of the judgment
The Plaintiff ’s trademark was a well-known trademark widely recognized by traders andconsumers in Russia as a trademark affixed to the Plaintiff ’s goods, namely sparkling wines. The
Plaintiff ’s trademark could berecognized to have maintained such recognition with intensive use.
Based on a comprehensive evaluation of these facts, it was be recognized that the Defendant,
which was aware that the Plaintiff ’s trademark was famous, created the trademark consisting often alphabetic characters “CRISTALINO” to intentionally use a similar combination of letters.
It was established by the Court that the registration and use of the Defendant’s trademark maylead to dilution of the famous Plaintiff ’s trademark with prior use and that the disputed trademark
should therefore be annulled.
10. Tags
Suit against
invalidation① Type of trial

296

decision

of

trial

for

Invalidation② Decision③Type of bad faithFree Ride✓

Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others297

VACHERON CONSTANTIN v. VACHERON CONSTANTIN
1. Title

VACHERON CONSTANTIN v. VACHERON CONSTANTIN

2. Country

Russia3. Court
4. Case No.

General Committee of the Supreme Arbitration Court (currently
abrogated)А40-73286/10-143-625

5. Date of the judgment

2012/04/24

6. Parties: Plaintiff

Richemont International S.A. and VACHERON & CONSTANTIN

Defendant
7. Mark

S.A. Tessir Partners LTD
Plaintiff

Defendant (disputed trademark)8. Outline of the caseA case in which the Defendant’s registered trademark was determined to be liable to cause
confusion with goods connected with another person’s business.
9. Summary of the judgment
The Plaintiff ’s trademark was a well-known trademark widely recognized by traders andconsumers in Russia as a trademark affixed to the Plaintiff ’s goods, namely jewelry and watches.
The Plaintiff’s trademark could be recognized to have maintained such recognition throughintensive use.
The Defendant’s mark was registered with respect to clothing and headwear.
Based on a comprehensive evaluation of these facts, it was recognized that the Defendant, which
was aware that the Plaintiff ’s trademark was famous, created the trademark copying the verbal
part of the Plaintiff ’s trademark in order to benefit from the reputation of the Plaintiff ’s
trademark. Traders and consumers who came across the Defendant’s trademark would associate
the Trademark with the Plaintiff ’s trademark.
It was established by the Court that the disputed trademark should be annulled, as it was created
for the purpose of free-riding the reputation of the Plaintiff.
10. Tags① Type of trial

Suit against decision of trial forinvalidation
Invalidation② Decision298

③ Type of bad faith✓Free Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others299

SERBIAv.
1. Title

Chocolate Hot Brown & Standing Girl Device v.
Chocolate Hot & Standing Girl Device

2. Country

Serbia3. Court

Court of Commerce in Belgrade

4. Case No.

P. 1260/18

5. Date of the judgment

2018/4/23

6. Parties: Plaintiff

Sun System Kft.

Defendant

Sun Service doo

7. Mark

Plaintiff

Defendant (disputed trademark)8. Outline of the case
The Plaintiff filed a bad faith action claiming that the Defendant knew that the Plaintiff had beenusing the relevant mark for many years for tanning lamps but nevertheless applied to register analmost identical mark for identical goods.
9. Summary of the judgment
The court denied the bad faith claim (the decision was appealed and is therefore not yet final)
because it found that the Respondent had started to import and distribute products marked withthe relevant sign in March 2011, which was before the Plaintiff ’s products became officiallyavailable on the local market in early 2012. The court ignored the fact that the Defendant filed thetrademark application only in September 2012 (at that time the Plaintiff ’s products were alreadyavailable on the local market) and that the Defendant’s representative admitted during his
testimony that he knew about the Plaintiff and its products, and even that he considered them tobe “well-known”. The court also ignored the Appellate Court’s instructions that it was irrelevant for
determination of bad faith, on the part of the Respondent, who placed the relevant products into
circulation first.
10. Tags
Court
actionfortransferoftrademark on the grounds of bad
faith① Type of trial300

② Decision

Claim denied (not final)③ Type of bad faithFree Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use✓

Others301

Kolid Sunday v. Sunday every day is a celebration (device)
1. Title

Kolid Sunday v. Sunday every day is a celebration (device)

2. Country

Serbia3. Court

Court of Commerce in Belgrade

4. Case No.

P. 1881/16

5. Date of the judgment

2018/4/16

6. Parties: Plaintiff

Kolid

Defendant
7. Mark

Internacional

dooel

Kolid International doo
Plaintiff

Defendant (disputed trademark)8. Outline of the case
The Plaintiff filed a bad faith action claiming that the Defendant knew that the Plaintiff had beenusing therelevant mark for many years for cakes and biscuits, but nevertheless applied to register an almost
identical mark for identical goods. However, at the time of filing of the application, the Defendant
was owned by the same persons who owned the Plaintiff and they later sold the company to thecurrent owner. Also, at around the same time when the disputed trademark was registered in
Serbia, the Plaintiff registered the mark in Macedonia and in a number of other countries using
the Madrid System, but it did not attempt to register it in Serbia, which suggests that it knew thatthe Defendant filed the relevant application in Serbia and that it agreed to such filing.
9. Summary of the judgment
The court granted the bad faith claim (the decision was appealed and is therefore not yet final), but
it did notprovide any reason for finding it in bad faith. Instead, in the reasoning of the judgment, the court
elaborated only on the alleged well-known character of the mark.
10. Tags
Court
actionfortransferoftrademark on the grounds of bad
faithClaim granted (not final)① Type of trial② Decision③ Type of bad faithFree Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company

302✓

Lack of intention to use
Others303

SINGAPORE
and A&F vs.
1. Title
2. Country

Abercrombie & Fitch Europe SAGL v MMC International Services Pte
LtdSingapore

3. Court

Intellectual Property Office of Singapore

4. Case No.

[2016] SGIPOS 6

5. Date of the judgment

16 August 2016

6. Parties: Plaintiff

Abercrombie

Defendant

&

Fitch

EuropeSAGL(Opponent) MMC International Services Pte
Ltd (Applicant)

7. Mark

Plaintiff (disputed trademark)Defendant

and A&F
8. Outline of the case
The Opponent filed an opposition against the application mark on the grounds of bad faith. The
Applicant was unable to provide any reason for its choice of A&F and the moose device. The
opposition succeeded and the application was refused.
9. Summary of the judgment

The Applicant sought to register the markfor goods in class 09 on 4 June 2013. The

application was accepted and published on 30 January 2014 for oppositional purposes. The
Opponent opened opposition proceedings on the grounds that the application’s mark was
confusingly similar to the Opponent’s mark and that the mark was filed in bad faith. The
Opponent’s marks were registered in classes 03, 14, 18, 24, 25, and 35.
While assessing the issue of bad faith, the Hearing Officer highlighted that “there may be a fineline between being inspired by another’s trademark as opposed to blatant copying or copying withsome modifications made to the mark”. The Hearing Officer took into consideration the fact that304

the Opponent was able to explain how its marks were conceptualized but the Applicant failed to doso.
The manner of use of the mark by the Applicant on the goods in question was also taken into
consideration. The Applicant appeared to use only the Moose device on the frame of spectacles andthe Application Mark which
consisted of the device of the moose and the words “A&F”, on the thin film on the lenses.
Taking the facts at issue into consideration, the Hearing Office found that the application was filed
in bad faith.
10. Tags① Type of trial

Opposition② Decision

Opposition succeeded③ Type of bad faith✓Free Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others305

A1 v. AOne
1. Title

A1 v. AOne

2. Country

Singapore

3. Court

Intellectual Property Office of Singapore

4. Case No.

[2017] SGIPOS 2

5.
Date
of
the
judgment
6. Parties: Plaintiff

10 January 2017

Defendant
7. Mark

AUDI AGLim Ching Kwang
Applicant

Proprietor (disputed trademark)A1
8. Outline of the case
The Defendant’s registration of a mark reproduced the entire list of goods contained in theAlphabetical List of the Nice Classification for its specification under class 12. The Applicant filed
for revocation of the registration in Class 12 on the grounds that it had not been used in
Singapore for a continuous period of 5 years; and that it be declared invalid for a lack of bona fide
intent to use the Mark for all the goods filed.
9. Summary of the judgment
The Mark was registered on 5 October 2009 with respect to Classes 7 and 12. These proceedings
concern only Class 12.
The specification in Class 12 reproduces the entire list of goods contained in the Alphabetical List of
the Nice Classification for that class.
The Plaintiff asked that the Defendant’s mark be (a) revoked on the grounds that it had not beenused in Singapore for a continuous period of 5 years; and (b) declared invalid on the basis that it
was applied for in bad faith.
On the non-use ground, the Registrar found that there was use of the Mark but only withrespect to torque rod bushes. The registration in Class 12 was therefore revoked, save for thefollowing goods: Torque rod bushes.

306

With respect to the bad faith claim, it was alleged by the Applicants that, regard for the
overwhelmingly wide scope of the specification for which the Mark is registered, it was patently
obvious that there could not be any realistic or bona fide intention on the Proprietor’s part touse the Mark for all the Goods and consequently, the conclusion must be that the Mark was
registered in bad faith.
The Registrar held that the mere registration of a large variety of goods and services was arather common practice of companies trying to obtain a trademark registration. It did not
involve conduct that departs from accepted principles of ethical behavior or honest
commercial and business practices. It was legitimate for businesses to seek registration of amark, not only for the categories of goods and services marketed at the time of filing theapplication but also for other categories of goods and services which it intended to market in
the future. There was, therefore, no bad faith in applying for a broader specification than one
in which a trader currently trades. A possible or contingent intention to use the mark at somefuture date may suffice.
10. Tags① Type of trial

Revocation and Invalidation② Decision

Partially Invalidated③ Type of bad faithFree Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company✓

Lack of intention to use
Others307

Gucci v GUCCITECH
1. Title

Guccio Gucci S.p.A. v Guccitech
Industries (Private Ltd) [2018] SGIPOS 1

2. Country

Singapore

3. Court

Intellectual Property Office of Singapore

4. Case No.
5. Date of the judgment

Guccio Gucci S.p.A. v Guccitech Industries (Private Ltd) [2018] SGIPOS
1
23 January 2018

6. Parties: Plaintiff

GUCCIO GUCCI S.P.A (Opponent)

Defendant
7. Mark

GUCCITECH INDUSTRIES (PRIVATE LTD) (Applicant)
Opponent’s markApplicant’s mark

GUCCI

8. Outline of the case:
The opposition succeeded on the grounds that the use of the Application Mark would dilute unfairly
the highly distinctive character of the Opponent’s GUCCI mark and that the Applicant would enjoy
an unfair advantage.
However, no bad faith was found.
9. Summary of the judgment
The Applicant was incorporated as a company in Singapore in 2010 and its corporate nameincluded the Opponent’s mark GUCCI in its entirety. The Applicant did not deny knowledge of the
Opponent’s trademark GUCCI, but they claimed that they did not believe that their conduct was
unfair. The IP Adjudicator found that the Opponent’s GUCCI mark was both well-known in
Singapore and well-known to the public at large in Singapore. Furthermore, the marks inquestion and the goods at issue were found to be similar such that there was a likelihood ofconfusion.
The use of the Application Mark would dilute unfairly the highly distinctive character of the
Opponent’s mark and would give the Applicant an unfair advantage. However, the IP Adjudicatoralso took the view that the
Opponent failed to establish that the application had been filed in bad faith. The IP Adjudicator
found that while the Applicant appeared to have taken a gamble on how the facts and laws would beinterpreted, “it was not so unreasonable a gamble as to justify a finding of bad faith” and therefore
the opposition failed on the grounds of bad faith.
10. Tags① Type of trial

Opposition
308

Opposition succeeded on grounds ofsimilarity of marks but no bad faithfound② Decision③ Type of bad faith✓Free Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others309

SPAINOCTANAJE vs. OCTANAJE MAGACINE
1. Title

OCTANAJE MAGACINE

2. CountrySpain

3. Court

Court of Appeal of Madrid

4. Case No.

Appeal nº 3/2016

5.
Date
of
the
judgment
6. Parties: Plaintiff

2017/10/23
ASOCIACIÓN DE EMPRESARIOS DE ESTACIONES DE SERVICIO
DE LA COMUNIDAD DE MADRID (AEESCAM)

Defendant
7. Mark

ABEIRO PROYECTOS E INVERSIONES, SL (ABEIRO)
Plaintiff (disputed trademark)Defendant

OCTANAJEOCTANAJE MAGACINE

8. Outline of the caseA case in which the Defendant’s registered trademark was determined to have been registeredcontrary to
objective standards of ethical behavior and only aimed to force the position of AEESCAM in a
conflict between them and to impede the activity of AEESCAN, consisting of the publication, since1975, of a magazine addressed to professionals of the automotive sector under the sign “Octanaje”.
Background
1. "Octanaje" was a sign used by AEESCAM since 1975 as the title of a magazine addressed tothe automotive sector.
2. The ownership of the publication, with its title and a distinctive sign, was transferredby its creator to AEESCAM in 2008.
3. In May 2008, AEESCAN contracted a printer and in 2009 ABEIRO was subrogated in thecontract with the first printer.
4. At the beginning of 2010, due to some contractual defaults regarding the distribution of
the magazine, AEESCAM terminated the contract with ABEIRO.
5. On 1 March 2011, ABEIRO filed a trademark application at the SPTO for the denomination“OCTANAJE MAGAZINE” in class 16 with respect to “printed publications”. Previously,
AEESCAM had asked ABEIRO about proceedings with the registration of the trademark
to its name (AEESCAM).
On May 2011, ABEIRO published the magazine with no references toAEESCAM.
310

9. Summary of the judgment
Relevant findings
1. The invalidity action based on bad faith did not require a previous registration owned by the
Plaintiff.
2. The success of an invalidity action did not depend on the existence of oppositions against
the trademark application.
3. The bad faith of the application was justified by the fact that the title of the magazine had
been used prior to the intervention of ABEIRO and, this company, as a consequence of thedifferences in the professional relationship, used the application as a reaction against
AEESCAM to force its position in the conflict and to impede its development of its normal
activity.
10. Tags
Appeal against decision for trial forinvalidation
Invalidation① Type of trial② Decision③ Type of bad faithFree Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others311✓

HISPANO SUIZA vs.
AUTOMÓVILES, S.A.

HISPANOSUIZA,

FÁBRICA

1. Title

HISPANO SUIZA

2. CountrySpain

3. Court

Spanish Supreme Court

4. Case No.

Appal nº.70/2017

5. Date of the judgment

2017/02/08

6. Parties: Plaintiff

LA HISPANO SUIZA FÁBRICA DE AUTOMÓVILES,

Defendant
7. MarkDE

S.A. DELMAR 04, S.A.
Plaintiff (disputed trademark)

HISPANO SUIZA

Defendant

HISPANO SUIZA, FÁBRICA
DE AUTOMÓVILES, S.A.

8. Outline of the case
The Plaintiff requested that the Commercial Court of Barcelona not only declare that the owner ofthe HISPANO SUIZA trademark must be La Hispano Suiza, Fábrica de Automóviles S.A., but also
requested the invalidity of the Spanish trademark No. 2.901.221 “HISPANO SUIZA” because it
had been registered in bad faith by the Defendant. On the other hand, the Defendant requested therevocation of the trade name HISPANO SUIZA, FABRICA DE AUTOMOVILES, S.A.
Background
Relevant
facts:
1. La Hispano Suiza Fábrica de Automóviles S.A. was a company constituted in 1904 and was
dedicated to car manufacturing and was the past owner of several trademarks which had expired.
The company was the owner of the Spanish trade name No. 111.027 "La Hispano Suiza Fábrica deAutomóviles S.A.", which expired the moment the Defendant applied for the Spanish trademark
application No. 2.901.221 “HISPANO SUIZA”.
2. DELMAR 04, S.A., the Defendant in this proceeding, was a company which owned the
Spanish trademark No. 2.901.221 HISPANO SUIZA.
3. The Plaintiff, La Hispano Suiza Fábrica de Automóviles S.A., filed a claim before theCommercial Court of Barcelona requesting invalidity of the “HISPANO SUIZA” trademark
because supposedly it had been requested in bad faith by the Defendant. The Commercial Court

312

dismissed this claim.
4. The Plaintiff decided to appeal this decision before the Court of Appeal of Barcelona which
upheld in part the appeal filed by the Plaintiff because the Court understood that requirements
were needed to understand the existence of unfair competition. However, the decision confirmedthat although the knowledge of the “Hispano Suiza” trademark might have been evident in a
substantial part of the national territory, the Court of Appeal did not consider it was aconsequence of the use of the trade name 'La Hispano Suiza, Fábrica de Automóviles, S.A.
5. Despite this favorable decision, La Hispano Suiza Fábrica de Automóviles S.A., decided to appeal
this decision before the Spanish Supreme Court.
9. Summary of the judgment
Relevant findings:
1. Ultimately, the Spanish Supreme Court dismissed the appeal filed by the Plaintiff because it
considered the new registration of the Hispano-Suiza trademark could not suppose any use of
the prestige and reputation that could be associated, by means of that sign, with the businessactivity of the Applicant, because at that time, the Plaintiff, La Hispano Suiza Fabrica deAutomoviles, S.A., did not have a relevant position in the vehicle market for the manufactureand sale of automobiles from which the Defendant could take advantage of its registration.
2. With respect to the bad faith alleged by the Plaintiff, the Spanish Supreme Court ratified that,in this case, the requirements were not met due to the fact that although the trademark
HISPANO SUIZA might be associated with the historical sign related to the vehicles, the Plaintiff
did not have a registration in force because they were expired.
3. The Supreme Court understood that the activity of the manufacture and sale of cars ceased
more than 80 years ago, and it was not possible for that business activity to gain a position in themarket from which the Defendant would benefit with its trademark registration.
10. Tags① Type of trial

Appeal against a decision of the Court ofAppeal of Barcelona
Invalidation② Decision③ Type of bad faithFree Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others✓313

NEW YORK FAIR & LOVELY
1. Title

NEW YORK FAIR & LOVELY

2. CountrySpain

3. Court

Appeal Court of Barcelona

4. Case No.

Appeal No. 663/2015

5. Date of the judgment

2016/12/27

6. Parties: Plaintiff

UNILEVER PLC y UNILEVER NV

Defendant
7. Mark

TECHNOPHARMA LIMITED
Plaintiff

Defendant (disputed trademark)“NEW YORK FAIR & LOVELY”

8. Outline of the case
Background
1. UNILEVER had FAIR & LOVELY trademark registrations in many countries around theworld (mainly in the areas of the Persian Gulf, India, Caribbean and Latin America). As amatter of fact, the mark was very famous in India, where its products were leaders in themarket for decades. However, UNILEVER’s FAIR & LOVELY mark had barely any presence inthe EU (just a minor presence in the UK), which was the case for the last 40 years.
2. The Defendant was a direct competitor of the Claimant. They were involved in several
disputes around the world and knew each other perfectly.
3. The Defendant registered the mark NEW YORK FAIR & LOVELY in the EU. The Applicant
opposed the said mark on the basis of the UK national mark. The opposition was upheld, however,
the original EUTM application was converted to several national marks, including a Spanish one.
4. Even though the Defendant registered the mark in Spain, it had not used it for 12 years.
5. The Claimant filed an action claiming that said mark had been filed in bad faith.
9. Summary of the judgment
Relevant findings
1. The fact that both parties were direct competitors made it reasonable to believe that the
Defendant knew the Claimants and their marks, even if they were just reputed in a market so
far from the EU in India.
2. The fact that the Claimant had ignored the Spanish mark, regarding the FAIR & LOVELY mark,for over 40 years, was not relevant.

314

3. The Defendant had a clear intention to hamper the access of the Claimants to the Spanish
market. Even if the Claimants were not present in Spain for over 40 years, it may be reasonable
that they would be in the future (since they were present in some 40 countries).
4. FAIR & LOVELY were distinctive terms in Spain. The fact that both marks shared the term
may not be a coincidence.
10. Tags① Type of trial

First instance and appeal procedures(Court procedures)② Decision

Invalidation③ Type of bad faithFree Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others315✓

CAFÉ DEL MAR
1. Title

CAFÉ DEL MAR

2. CountrySpain

3. Court

Mercantile Court No. 2 of Alicante (Spanish EUTM Court), Appeal Courtof Alicante (Spanish EUTM Appeal Court)

4. Case No.

Judgment no. 206/11 Appeal no. 198/12

5. Date of the judgment

First instance: July 12, 2011 Appeal: April 27, 2012

6. Parties: Plaintiff

PLAINTIFF: CAFÉ DEL MAR, S.C., CAN GANGUIL, S.L., CARLOS
ANDREA GONZÁLEZ, JOSÉ LES VIAMONTE

Defendant

DEFENDANT: RAMÓN GUIRAL

7. Mark

Plaintiff

Defendant (disputed trademark)“CAFÉ DEL MAR”

8. Outline of the case
Preliminary Note: We do note that the decisions in this case were rendered more than 3 years ago.
In any case we have included this case in the compilation because it is one of the most interestingcases dealing with bad faith in Spain.
Background
Mr. Les, Mr. Guiral and Mr. Andrea were friends for several decades and initiated a common project
identified with the sign CAFÉ DEL MAR. The project became a real success, and the bar CAFÉDEL MAR gained aremarkable reputation in Ibiza, Spain and the whole world.
Within this common project, Mr. Les and Mr. Andrea were in charge of public relations and thedaily operation of the CAFÉ DEL MAR bar, whereas Mr. Guiral was in charge of administrative
stuff (contracts, official permissions, accountancy, etc.), for which he was granted the Power ofrepresentation by Mr. Les and Andrea.
All of the benefits of the common project were distributed in equal part (1/3). The partners/friends
set up several companies to articulate the project, in all of them, they had an equal part (1/3).
At a certain point Mr. Guiral started registering on his ow behalf CAFÉ DEL MAR trademarks,316

paying said registration with the common funds of the project CAFÉ DEL MAR and the companies
created around it.
9. Summary of the judgment
Relevant findings:
1. The fact that one of the partners (the Defendant, Mr. Guiral) could have had a prominent rolein the common project did not enable him to register the trademarks CAFÉ DEL MAR (the signidentifying the common project) on his own behalf.
2. By proceeding in this way, Mr. Guiral had acted in bad faith and in fraud of his partner´s rights.
3. The fact that the benefits of the common project had always been distributed in equal parts was
irrelevant. What was relevant was that the Defendant had appropriated for himself something(the CAFÉ DEL MAR marks) that legitimately belonged to the three partners.
4. The fact that Mr. Guiral had Power of Attorney was irrelevant. Power of Attorney was
granted so that Mr. Guiral could act legitimately, protecting his partner´s rights and not in
detriment to them.
5. The Defendant claimed that his partners had been reckless for almost 10 years and had notshown any interest in the status of the trademarks or whether they were registered or not. The
sole thing they allegedly were interested in, was that the benefits were distributed properly.
The rulings concluded that the Defendant´s arguments were not well founded. It was not that thePlaintiffs were reckless. The fact was that, given the long friendship and relations they had for over
20 years with the
Defendant, they entrusted everything to him, and were thus not interested in any aspect that
was alien to the duties they had been charged with (public relations and the like).
6. The Defendant took unfair advantage of that close friendship.
7. The sign CAFÉ DEL MAR was jointly owned by the 3 partners/the 3 founders of the common
project.
10. Tags① Type of trial

First instance and appeal procedures(Court procedures)② Decision

Invalidation③ Type of bad faithFree Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others317✓

SWEDEN
COCOZ

vs.

1. Title
2. Country

COCOZ vs.
Sweden3. Court

Swedish Patent and Market Court at Stockholm District Court

4. Case No.

PMÄ 11046-16

5. Date of the judgment

2017/02/07

6. Parties: Plaintiff

H.F.

Defendant
7. Mark

2-Feeling-Good Sweden
Plaintiff (invalidity applicant)Defendant (disputed trademark)

COCOZ

8. Outline of the case
The Defendant’s lack of evidence with regard to the motives of the decision to apply for registration,in light of the Plaintiff ’s submission, resulted in an invalidation of the registration.
9. Summary of the judgment
The Patent and Registration office registered the figurative trademark COCOZ. The proprietor of
the trademark was 2-Feeling-Good Sweden. The Plaintiff, who owned a private company called Lifa
Webbyrå, applied for invalidation of the trademark registration. The trial court maintained thetrademark, a decision that the Plaintiff appealed.
The Plaintiff stated that they had developed the logotype the Defendant registered as a figurativetrademark. The court found that the facts of the case supported this claim. The court thereafter
pointed to the fact that the
Defendant applied for registration of an identical logotype the same year that the Plaintiff
developed theirs. It was considered unlikely by the court that two identical logotypes of this kind
would be developed independently of each other. Thus, the court concluded that the Defendant
exploited the logotype developed by the Plaintiff through their application. Given thesecircumstances and that the Defendant did not present any evidence showing any commercial
motives for their application, the court stated that the purpose of applying must, to some extent,
have been to affect the Plaintiff ’s use of the sign. In sum, the Defendant was found to have appliedin bad faith.
10. Tags
318

Suit against decision of trial forinvalidity
Invalidation① Type of trial② Decision③ Type of bad faithFree Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others319✓

CLIMATE POSITIVEvs.

CLIMATE POSITIVE

1. Title

CLIMATE POSITIVE vs. CLIMATE POSITIVE

2. Country

Sweden3. Court

Swedish Patent and Market Court at Stockholm District Court

4. Case No.

PMÄ 14239-16

5. Date of the judgment

2017/02/01

6. Parties: Plaintiff

Falu Energi & Vatten Ecodc

Defendant
7. Mark

Elementica Data Center Construction
Plaintiff (invalidity ipplicant)Defendant (disputed trademark)

CLIMATE POSITIVE

CLIMATE POSITIVE

8. Outline of the case
The court maintained the disputed trademark registration, finding that the relevant public would
not have reason to perceive the disputed trademark as a sign of the Plaintiff ’s services andtherefore there was a lack of a reason for invalidation.
9. Summary of the judgment
The Defendant applied for registration of the trademark CLIMATE POSITIVE, which was
registered by the Swedish Patent and Registration Office. The Plaintiff applied for invalidation ofthis registration on several grounds, including the assertion that it was filed in bad faith. The trial
court rejected the Plaintiff ’s application, and the Plaintiff appealed.
The Plaintiff argued that they had been developing the brand CLIMATE POSITIVE for an
extensive period of time and that the Defendant was well aware of this fact. They stated that themain owner of the Defendantcompany had attended events in which the CLIMATE POSITIVE- concept was presented. The
Plaintiff claimed that the Defendant’s purpose in registering the mark was to obstruct thePlaintiff ’s further use of the sign.
The court found that the investigation did not support that the Plaintiff had used the term
CLIMATE POSITIVE in such a manner as described at the time of the Defendant’s application,
nor that the relevant public had reason to perceive CLIMATE POSITIVE as a sign of the320Plaintiff ’s services. The court therefore concluded that it
lacked reason to invalidate the trademark registration.
10. Tags
Suit against decision of trial forinvalidation
Maintenance① Type of trial② Decision③ Type of bad faithFree Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others321✓

SVENSKA RESEBOLAGET vs.
1. Title
2. Country

SVENSKA RESEBOLAGET vs.
Sweden3. Court

Court of Patent Appeals (PBR)

4. Case No.

PBR 15-023

5. Date of the judgment

2016/08/12

6. Parties: Plaintiff

SRB Travel GroupDefendant
7. MarkSvenska Resebolaget I Kungälv
Plaintiff (Invalidity Applicant)Defendant (disputed trademark)

SVENSKA RESEBOLAGET

8. Outline of the case
The burden of proof with regard to applications filed in bad faith lied with the Plaintiff, who in thiscase was unable to show that the application was filed in bad faith. The court thereby ruled tomaintain the trademark registration.
9. Summary of the judgment
The Swedish Patent and Registration office registered the figurative trademark SVENSKA
RESEBOLAGET in 2002 with the Defendant as its proprietor. The Defendant was a subsidiary of
the Plaintiff ’s company until 2010.
During the time that the Defendant was a part of the Plaintiff ’s operations, the trademark
was used by all companies in the group. The registration was not renewed, and theprotection lapsed in 2012. In 2013, the Defendant applied for a new registration of the
trademark. The Swedish Patent and Registration office registered the trademark; a decisionthat was appealed by the Plaintiff.
The Plaintiff argued that the Defendant knew, at the time of application and during an extensive
time beforehand, that the Plaintiff used the trademark. They also contended that the Defendant
had committed themselves to cease the use of the trademark in a contract prior to the application
for registration. The Defendant claimed that they were the proprietor of the trademark even before
they became a subsidiary to the Plaintiff ’s company, and that the Plaintiff’s use of the trademark
was granted by the Defendant. Furthermore, they argued that the contract did not encompass this322

trademark, since it only regarded trademarks owned by the Plaintiff.
The court found that the facts of the case did not elucidate whether the Plaintiff used thetrademark SVENSKA RESEBOLAG after the cooperation with the Defendant ended.
Furthermore, the court pointed to the fact that the Plaintiff had not shown that the title to thetrademark was transferred to the Plaintiff nor that the Defendant in any way agreed not to use thetrademark. In light of these circumstances, and since no other facts which would indicate that the
Defendant was acting in bad faith were presented, the court ruled to maintain the trademark
registration.
10. Tags
Suit against decision of trial forinvalidity
Maintenance① Type of trial② Decision③ Type of bad faithFree Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others323✓

BERGLÖFSLÅDAN vs.
1. Title
2. Country

BERGLÖFSLÅDAN and BERGLÖFSLÅDAN ORIGINALBERGLÖFSLÅDAN vs. BERGLÖFSLÅDAN and BERGLÖFSLÅDANORIGINAL
Sweden3. Court

Court of Patent Appeals (PBR)

4. Case No.

PBR 14-063 & 14-064

5. Date of the judgment

2015/12/14

6. Parties: Plaintiff

Swede Rehandling Systems

Defendant

SRS MoveTech World Wide

7. Mark

Plaintiff (Invalidity Applicant)Defendant (disputed trademark)
BERGLÖFSLÅDAN

BERGLÖFSLÅDAN

BERGLÖFSLÅDANORIGINAL

8. Outline of the case
The Defendant in the case was, as per their own statement, already the proprietor of the
trademark BERGLÖFSLÅDAN CUSTOM, and that the disputed trademarks BERGLÖFSLÅDAN
and BERGLÖFSLÅDAN ORIGINAL were applied for with the purpose of extending the existing
protection for the sign BERGLÖFSLÅDAN. This fact led the court to conclude that thecircumstances at the time of the earlier registration needed to be taken into account. The court
argued that the circumstances at that time opposed the notion that the application was filed with alegitimate intent. Thus, the court declared invalid the contested trademarks.
9. Summary of the judgment
The Plaintiff had applied for the disputed trademark to be declared invalid on the basis that, interalia, theapplication was filed in bad faith. The Plaintiff argued that it was evident that the application forregistration of the trademark was filed to obstruct existing and emerging actors in the relevantmarkets from using theestablished denotation BERGLÖFSLÅDAN. The Defendant stated that they had used the sign
BERGLÖFSLÅDAN

since

1997

and

that

they

owned

the

trademarkregistration

BERLÖFSLÅDAN CUSTOM as of 2004. The contested application was filed as an extension ofprevious protection, as per their statement.
The Court stated that, as the disputed trademark registration was applied for as part of previous
protection, there was reason to also consider the circumstances at the date of the earlier
registration (that was 2004).

324

The court found that the facts of the case showed that the Defendant had knowledge of the origin of
the sign BERGLÖFSLÅDAN, including how and when it came into being (which was establishedover 50 years ago),
as well as knowing that other actors on the market used the sign BERGLÖFSLÅDAN for certain
goods for a long time before they started using the sign. The Defendant also knew that otheractors used the sign at the time of application for registration of the earlier trademark
BERGLÖFSLÅDAN CUSTOM. The court argued that these circumstances contested the notionthat the registration was made as part of a normal line of business with legitimate commercial
interests. The Defendant could, however, still be regarded as having a legitimate interest for
applying for registration. However, given evidence put forth by the Defendant, the court concluded
that no evidence provided sufficient support to show it had a legitimate interest.
In sum, the Defendant was considered to have acted in bad faith.
10. Tags① Type of trial

Suit against decision of trial forinvalidation② Decision

Invalidation③ Type of bad faith✓Free Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others325

TAIWAN
Pizza Hut, 熱到家 v. 熱到家 Co.,Ltd
1. Title
2. Country“re-dau-jia” Co., Ltd v. Intellectual Property Office (Intervener Pizza
Hut)
Taiwan3. Court

Supreme Administrative Court

4. Case No.

最高行政法院 98 年度判字第 321 號判決(Supreme Administrative Court Decision No. 2009-Pan-321)

5. Date of the judgment

2006.3.26

6. Parties: Plaintiff

Pizza HutDefendant
7. Mark“re-dau-jia” Co., Ltd
Plaintiff (disputed trademark)Pizza Hut,熱到家

Defendant

熱到家 Co.,Ltd8. Outline of the case
The applicability of reasonable burdens of proof for establishing a presumption of bad faith.
9. Summary of the judgment
Pizza Hut used “熱到家(re-dau-jia)” as a trademark (and an advertisement slogan) for its
products in Taiwan. The appellant filed an application for the “熱到家” mark designating
restaurant services in Class 43. Pizza Hut filed an opposition against the “熱到家” mark.

Taiwan is a first-to-register jurisdiction and, generally, rights are based on registration rather
than use. However, there is protection for unregistered famous trademarks, or where a mark is
pre-emptively registered by a third party for the purposes of counterfeiting or imitating the mark.
Nevertheless, it’s always challenging for the opposing party to prove that the Applicant knows of
the existence of the opposing party’s mark and that the application was filed with the intent tocounterfeit or imitate that trademark.

In this case, Pizza Hut was unable to provide evidence proving the above facts. The court
determined that the Applicant knew of the opposing party’s trademark by operating in the same
industry. Therefore, if a squatter was operating in the same business as the opposing party, the326

opposing party did not need to provide evidence proving that the Applicant was aware of the
opposing party’s mark through a certain relationship.
10. Tags① Type of trial

Appeal dismissal② Decision

Registering a similar trademark to aprior-used one while operating abusiness in the same industry will
establish a presumption of bad faith.

③ Type of bad faithFree Ride✓

Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others327

THAILAND
D2 v.
1. Title

Belmont Brands Limited v. Mr. Boonyasak Wattanaharuthai

2. Country

Thailand3. Court

Thai Supreme Court

4. Case No.

9972/2558

5.
Date
of
the
judgment
6. Parties: Plaintiff

28 August 2015
1. Belmont Brands Limited
2. Dsquared2 TM SA

Defendant

1. Mr. Boonyasak Wattanaharuthai
2. Domon (1987) Co,. Ltd.
3. Ms. Bussaba Wattanaharuthai

7. Mark

Plaintiff (disputed trademark)Defendant

8. Outline of the case
The Claimants (Plaintiffs) began using their marks worldwide before the Registrant (Defendant)
filed for registration of its marks in Thailand, which were similar to the Claimants’ marks (not yet
registered in Thailand).
The Claimants brought an action under the law of passing off with a request to cancel the
Defendant’s registrations.
328

9. Summary of the judgment
1. The Claimants began using their marks worldwide before the Registrant filed forregistration of its marks in Thailand, which were similar to the Claimants’ marks (notyet registered in Thailand). Based on the weight of use evidence, it was held that the
Claimants had better rights to the marks.
2.

As the marks were used by the Claimants internationally (but not registered orapplied for in Thailand yet with respect to the relevant goods), but were registered in
Thailand under the Registrant’s name and were similar, this fact gave the Claimants a
legitimate standing to file for cancellation claiming better rights, even though the
Claimants had not registered or applied for registration of their marks in Thailand.
The Claimants had the right to file the cancellation petition.

3.

A similarity or connection between the goods to which the parties’ marks were usedmade it likely that concurrent use of such marks by different parties would lead toconsumer confusion as to the origins of the goods. As the Claimants had better rights
to their marks, the Court ordered to cancel the Registrants’ trademark registrations.

4.

While the parties’ marks were not identical, the Defendants use of their marks in amanner similar to the Claimants’ use of their marks showed that the Defendants had
the intention to pass off their goods as the Claimants’.

5.

As the Claimants’ marks were not registered in Thailand, they were only entitled to
remedies under the law of passing off.

6.

The Defendants were ordered to cease using all trademarks, product forms anddesigns which were rightful intellectual property of the Claimants.

7.

The Defendants ordered the Claimants to pay THB 100,000 (approximately USD
3,125) per month in damages, calculated from the court case filing date, until the
Defendants had ceased using the trademarks, product forms and designs which were
the rightful intellectual property of the Claimants.

10. Tags① Type of trial

Suit based on passing off with arequest to invalidate② Decision

Passing-off - Invalidation③ Type of bad faithFree Ride✓

Imitation by agents or people who have a priorrelationship329

Interference by a competing company
Lack of intention to use
Others330

UK
32 vs. 32Vegas
1. Title

32

2. Country

United Kingdom

3. Court

Court of Appeal

4. Case No.

[2012] EWCA Civ 19

5. Date of the judgment

2012/01/24

6. Parties: Respondent

32 Red Plc (A Gibraltar Company)

Appellants

7. Mark(1) WHG (International) Limited (A Gibraltar Company);(2) WHG Trading Limited (A Gibraltar Company);(3) William Hill PLC
Claimants/ Respondents(disputed trademark)32

Defendants / Appellants

32Vegas8. Outline of the caseA case in which the Appellants alleged bad faith in making the application to register a
trademark due to lack of genuine intention to use the mark.
9. Summary of the judgment
The Appellants (together, "WH") were in the business of online gaming services, theRespondent ("Red") was an online casino operator. Red had operated an online casino "32Red"
since 2002 and subsequently registered the "32Red" trade and device marks. In 2008, WH
acquired an online casino "32Vegas"and used signs and devices based on the casino's name.
Red brought proceedings against WH for infringement of its registered trademarks. For the
purposes of this summary, the relevant mark was UKTM for the number "32" (the "Mark"),
however Red also had a Community trade and device marks for "32Red" (together the"CTMs"). WH disputed the validity of the Mark on a number of grounds, including a claim that(i) Red applied for the registration in bad faith "to prevent other traders in the market placefrom using the number 32 and therefore from trading or from entering the market for the
supply of casino and gaming services and similar." and (ii) that Red did not have a genuine
intention to use the Mark.
In the first instance, the judge decided that whilst it was clear that Red made the application
to strengthen its position in the forthcoming litigation against William Hill Online and with331

an intention to enjoy the monopoly to use the Mark for online casinos and related services,such considerations "are not necessarily indicative of bad faith". The application was made"for good tactical reasons of this nature, in a context where [Red] believed(…) that the use by William Hill Online of the [32Vegas] signs infringed the [CTMs], andwhere no commercially significant use had been made by anybody else of marks
incorporating the figure 32, let alone the figure 32 in isolation, in the field of online
gambling.". The judge also found that in respect of lack of intention to use, even though
there was no evidence of use of the mark "32" on its own by Red to designate its online
casino, the presumption of good faith applied and there was not sufficient evidence to rebutthat presumption.
The judge referred to some uses of the figure 32 in a broken circle and concluded that suchuses of the figure 32 "may in due course provide a springboard for increasing use of the
figure 32 alone".
The Court of Appeal ("CA") upheld the decision of the judge. CA stated that the Appellants'
submissions failed to show a lack of genuine intention to use the mark by Red at the time of
application.
10. Tags① Type of trial

Appeal② Decision

Appeal dismissed③ Type of bad faithFree Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use✓

Others332

Alexander
1. Title

Alexander

2. Country

United Kingdom

3. Court

Appeal to Appointed Person

4. Case No.

O-036-18

5.
Date
of
the
judgment
6. Parties: Applicant

2017/12/18

Opponent
7. MarkCKL Holdings NV
Paper Stacked Limited
Applicant (disputed trademark)Opponent

ALEXANDER

8. Outline of the caseA case in which the Applicant's application was determined to have been made in bad faith due tolack of intention to use the mark.
9. Summary of the judgment
The Applicant sought to register the mark "ALEXANDER" in relation to mirrors and picture
frames in class 20, but the Opponent opposed the registration on the ground of bad faith inmaking the application. The Opponent argued that the Applicant had no genuine intention to
use the mark and that it had a track record of several hundred trademark filings in various
territories, many of which comprise of common first names.
The Applicant denied the allegation and said that it had acted lawfully when filing theapplication. The Opponent submitted evidence showing that the sole director of the Applicant
company, Mr Michael Gleissner, held directorship of over 1200 UK companies, which included
Trump International Ltd and EUPIO International Ltd. Further, that Mr Gleissner's companies,in addition to their applications for trademarks for common names, had registered or applied formore distinctive marks such as EUIPO and TESLA, BAIDU, ENRON, PAN AM, among others.
The Opponent also showed that with respect to UKTMs, 6 out of 8 applications were opposed, in
contrast with a usual opposition rate of 4.5% and adduced evidence of Mr Gleissner's pattern ofregistrations, such as articles, searches and entries on the LinkedIn profile of the Trademark
Manager at one of Mr Gleissner's companies. The Applicant responded with its own submission
but no supporting evidence.
The Hearing Officer had to answer the following questions to conduct the relevant

333assessment: "(1) what, in concrete terms, was the objective that [the Applicant] had beenaccused of pursuing? (2) was that an objective for the purposes of which the contested
application could not properly be filed? (3) was it established that the contested application
was filed in pursuit of that objective?". In relation to the second question, the test was fordishonesty or falling short "of the standards of acceptable commercial behaviour observed byreasonable and experienced men in the particular area being examined".
The Appointed Person stressed that the question of bad faith was a separate one from whether amark wascapable of being registrable and that "[t]he objection is absolute in the sense that it is intended toprevent abusive use of the system for acquiring title to a trademark by registration." It does not
require the person challenging the application to be personally aggrieved.
Based on the evidence submitted by the Opponent and the written observations filed on behalf of
the Registrar (which showed that as of November 2017 Mr Gleissner's entities were a party to 5%of the contested TM cases before the UKIPO), the Appointed Person determined that the prima
facie case of bad faith was made out and the Applicant failed to rebut it.
10. Tags① Type of trial

Appeal to Appointed Person② Decision

Appeal dismissed – application rejected③ Type of bad faithFree Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company✓

Lack of intention to use
Others334

CHINAWHITE
1. Title

CHINAWHITE

2. Country

United Kingdom

3. Court

Court of Appeal

4. Case No.

[2004] EWCA Civ 1028

5. Date of the judgment

2004/07/27

6. Parties: Appellant

Harrison

Respondents
7. Mark

Teton Valley Trading Co
Appellant (disputed trademark)Respondents

CHINA WHITE

8. Outline of the caseA case in which bad faith in making an application to register a trademark was established basedon theAppellant's belief and surrounding facts (i.e. knowledge that a club and a drink under the same
name as the mark applied for had been used by the Respondents).
9. Summary of the judgment
In March 1999, the Appellant applied to register the CHINA WHITE mark “beers; mineral andaerated waters
and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations formaking beverages” in Class 32, and “alcoholic beverages (except beers) including cocktails” inClass 33. The Respondents' licensees run a night club called "CHINA WHITE" (the "Club") at thepremises occupied by the Respondents.
In the first instance, the Hearing Officer found that at the date of the application, the Respondents
enjoyed a reputation in the Club. Mr Rymer, a bar manager, was instructed, as part of his duties, tocreate and develop a signature cocktail which would be white in colour and oriental in flavour andcall it "CHINA WHITE". MR
Rymer and his team came up with the cocktail which went on sale early December 1998. Also in
December, Mr Rymer and others signed a confidentiality agreement with respect to the recipe forthe "CHINA WHITE"
cocktail. The Respondents informed Mr Rymer that they had plans to bottle the drink and thatwhen that happened, he would be rewarded with bonus payments.
The Appellant was approached by Mr Rymer, who told him about a drink that he had developed,335

the derivative of which was to be served at a new venue to be called "CHINA WHITE". Mr Rymer
told the Appellant that he would be working as a barman at the Club, but that he was not boundby any formal contract.
The Appellant claimed that he believed that the drink was the sole property of Mr Rymer. The
Hearing Officer determined that under the circumstances, the Appellant should not have accepted
Mr Rymer's assurances at face value. The Appellant was aware that Mr Rymer was a barman at
the Club and that he had developed a drink called CHINAWHITE, the derivative of which was tobe served at the Club. The Hearing Officer found that these facts would have led a reasonably
informed businessman in the relevant field to question Mr Rymer further and not to turn a blindeye, adding that conducting a trademark registry and Companies House search was not enough.
The Officer's decision was upheld by the judge. At the appeal to the Court of Appeal ("CA"),
the Appellant argued that the words "made in bad faith" required dishonesty. This argument
was rejected by the CA who explained that this was not a test under the Trademark Act 1994,
and that "[n]o doubt an application madedishonestly will be made in bad faith, but it does not follow that if dishonesty is not established, badfaith cannot have existed." The CA clarified that the correct test is "whether the knowledge of the
Applicant was such that his decision to apply for registration would be regarded as in bad faith by
persons adopting proper standards." The CA found that whilst there was no evidence of deliberately
avoiding questions (in the sense of having considered them but deciding not to ask), the Hearing
Officer correctly took into account the belief of the Applicant and the surrounding facts and wasright to come to a conclusion that bad faith had been established.
10. Tags① Type of trial

Appeal② Decision

Appealdismissed
successful -Bad faith③ Type of bad faithFree Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others336✓-

Opposition

One Max
1. Title

One Max

2. Country

United Kingdom

3. Court

Appeal to Appointed Person

4. Case No.

O-486-17

5. Date of the judgment

2017/10/06

6. Parties: Applicant

ONE MAX LTD

Opponent
7. Mark

HTC CORPORATION
Proprietor (disputed trademark)Opponent

ONE MAX

8. Outline of the caseA case in which, based on the facts and evidence, the Opponent showed that the Proprietor's TM
applications were made in bad faith, with the knowledge that the Opponent was about to launch a
product under the identical name as the mark.
9. Summary of the judgment
The Managing Director of One Max Ltd ("One"), then a long-time dormant company, became awarein June 2013 that HTC Corporation ("HTC") was planning to launch a new product to be called
HTC One Max and decided to make TM applications for both a logo and words "One Max" withrespect to goods (such as mobile phones and tablets) in class 9 and services in class 42, which wereoutside One's area of activity. HTC opposed the marks on the basis of the application being madein bad faith and the Hearing Officer decided in its favour, holding that One's applications were
simply blocking ones.
One appealed the decision, arguing that: (i) the Officer failed to take into account the fact that
ONE MAX was a pre-existing company name and part of a domain name registered since 2008; (ii)
One in fact had been trying, though without success, to establish a type of telecoms business; (iii)
One's registrations were a means to protect its own business and (iv) that the standard of bad
faith had not been proven.
The Appointed Person stressed the reasoning behind the bad faith provision was to tackle
illegitimate applications and not to serve "as a proxy for addressing a fear that [the mark] may later
be illegitimately used". He further explained that "[i]t is important to distinguish between asituation where an Applicant has no real basis for being entitled to protection for the mark and337

situations where it has an arguable basis, albeit one which may be unjustified." The Appointed
Person clarified that this, however, does not mean that a bad faith allegation can be defeated on thebasis of some tenuous and poorly substantiated justification. Instead, the assessment requires
looking at the evidence as a whole.
The Appointed Person further explained that "[i]f it is plain that an Applicant has, in substance, nolegitimate basis for acquiring the weapon or that it is illegitimately directed at a third party, thefact that it can point to a fig- leaf reason for saying that it wants it to defend its own patch and not
to embark on an unjustified raid on the business of others, is not enough (…)". In the present case,
the Appointed Person held that the Hearing Officer took into account all relevant evidence,
considered and evaluated it appropriately. The Appointed Person agreed that One's argument thatthe application was not done with a blocking intention was difficult to reconcile with One's actions
and chronology of events.
10. Tags① Type of trial

Appeal to Appointed Person② Decision

Appeal dismissed③ Type of bad faithFree Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others338✓

Roadrunners
1. Title

Roadrunners

2. Country

United Kingdom

3. Court

Appeal to Appointed Person

4. Case No.

O-094-17

5. Date of the judgment

2017/02/28

6. Parties: Proprietor

Roadrunners Gatwick Limited

Applicant
7. Mark

Road Runners (East Grinstead) Limited
Proprietor (disputed trademark)Applicant

ROADRUNNERS

8. Outline of the caseA case in which the Applicant challenged the Proprietor's trademark registration on the grounds ofbad faith, successfully arguing that the intention to register the trademark was to illegitimately
block its use by the
Applicant.
9. Summary of the judgment
The Proprietor registered a UKTM "ROADRUNNERS" with respect to the “[a]rrangement of taxi
transport; taxi services; taxi transport; transport of travellers by taxi” in class 39.
The Hearing Officer held that the mark was applied for in bad faith and should be invalidated. The
Officer found that "the intention behind the trademark application was to gain further protection
for the established Roadrunners mark owned by [the Proprietor] in Redhill and Reigate. This
included the prospect of taking infringement action in order to prevent [the Applicant] fromcontinuing to trade under the Roadrunners name."
The Proprietor appealed the decision, arguing that the findings made were outside the scope of thepleadings and that the evidence was insufficient for the Officer to find that the application wasmade in bad faith.

The Appointed Person reiterated the principles of bad faith set out in the Red Bull case by Arnold
J. With respect to the grounds of appeal, the Appointed Person found that the Hearing Officer's
findings were within the scope of the pleaded case and in reliance on evidence available to the339Officer. As to the more general claim of the Proprietor that it was for a person alleging bad faith toprove it and not for the person accused of it to disprove it, the Appointed Person accepted thisargument in principle but stressed that this was subject to a prima facie case of bad faith having
been made out. Once the person challenging the mark adduced specific evidence and made out aprima facie case, it was for the proprietor to adequately rebut it.
The Proprietor also invoked an argument that the mark applied for was in order to legitimately
protect its business and goodwill. The Appointed Person admitted difficulty in making a finedistinction between "impermissible appropriation or denial of third party right amounting to bad
faith and permissible assertion of a bona fide claim to a trademark right of one’s own" and stressedthat it must be borne in mind that bad faith is not to be invoked "to make general adjudications as
to commercial morality."
The Appointed Person determined that, on the facts and in light of evidence available, theapplication was indeed made in bad faith with a view to illegitimately block use by another party.
10. Tags① Type of trial

Appeal to Appointed Person② Decision

Appeal dismissed
invalidated③ Type of bad faithFree Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others340✓–

registration

UKRAINE
Mando v. MANDO
1. Title

Mando v. MANDO

2. Country

Ukraine3. Court

Court of general jurisdiction, Solomjanskyj district of Kyiv, Ukraine

4. Case No.

760/15975/15-ц

5. Date of the judgment

2016/03/14

6. Parties: Plaintiff

Halla Holdings Corporation

Defendants
7. Mark

Ukrainian State Service of Intellectual Property, Atsekhovskyy Anatoliy
Plaintiff

Defendant (disputed trademark)8. Outline of the case
Trademark legislation in Ukraine does not foresee refusal of bad-faith applications or cancellationof bad-faith trademark registrations as such. However, in accordance with Article 6.2.5 of theTrademark Law, a trademark registration cannot be registered in Ukraine if it is misleading or
may mislead as to the producer of goods, services or producers of goods or provider of services. In
the reported case, the contested trademark was cancelled as the court ruled that it may mislead as
to the producer of the goods.
9. Summary of the judgment
The Plaintiff in the reported case is Halla Holdings Corporation, a part of Hall Group, a South
Korean industrial conglomerate and producer of auto parts. In 2013, Halla Holdings filed two
trademark applications for the verbal stylized mark Mando, which were refused for protection by
the Ukrainian IPO on the basis of an earlier registration for the MANDO verbal mark registeredin the name of a Ukrainian individual with respect to identical or similar goods and services.
The Plaintiff filed a trademark invalidation action against the cited trademark arguing that it
was registered in bad-faith and that it was free riding on the reputation of the Plaintiff’s mark.
In their legal arguments, thePlaintiff referred to Articles 6.2.5 and 6.3.2 of the Ukrainian Trademark Law. The Plaintiff also
argued that at the moment of filing the contested trademark for registration with the Ukrainian
IPO, the Plaintiff was a famous producer of auto parts in many countries around the world, andthat their goods had been imported into Ukraine over a period of years. The contested trademark

341

would mislead consumers as to the producer of goods. A consumer would consider that it was thePlaintiff who was the producer of the contested trademark.
The court upheld the invalidation action and ordered cancellation of the contested trademark on the
Ukrainiantrademark register. The court’s decision included a reasoning that the Defendant’s trademark may
indeed mislead consumers as to the producer of the goods in view of the Plaintiff’s reputation in thebusiness of auto parts.
10. Tags① Type of trial

Trademarkcancellation
actionagainstbad-faith
trademarkregistration
Cancellation of bad-faith trademark
registration② Decision③ Type of bad faith✓Free Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others342

URUGUAY
F1 v. F1 FORMULA 1
1. Title

F1 v. F1 FORMULA 1

2. Country

Uruguay

3. Court

Patent and Trademark Office

4. Case No.

440.692

5. Date of the judgment

2017/7/11

6. Parties: Plaintiff

AlbertoDefendant
7. Mark

ScassoVolontéFormula One Licensing B.V.
Plaintiff (disputed trademark)Defendant

F1

F1 FORMULA 1

8. Outline of the caseA case in which the Plaintiff’s application was determined as contrary to ethics of business andliable to cause confusion with goods connected with another person’s business.
9. Summary of the judgment
The mark applied for was not sufficiently different from the previously registered trademark
owned by the opposing party and thus its registration could not be granted. Moreover, the mark forwhich registration was sought gave the impression of belonging to the family of trademarks of the
opposing party.
As for the goods and services protected by the conflicting signs, the application sought todistinguish services in international classes 35 and 41, which the opposing party’s priortrademark registrations covered, with theensuing risk of direct confusion among consumers.
With respect to the specialty principle established under Article 11, paragraph 1, of Law 17,011,
which was invoked by the Applicant in support of his application, it should be noted that “thislegal principle admits two basic exceptions: (1) when the mark applied for is identical or similar
to an existing mark that covers goods or services that are similar but are included in different
classes; [and] (2) when the Applicant seeks to register a famous mark.”
In this case, there was also a risk of indirect confusion between similar marks that distinguishcompeting goods. The goods under international class 9 for which the Applicant sought
registration competed with the products under international class 16 covered by the opposing
party’s prior registration; likewise, the services under international class 42 competed with those343

under international class 38; this thus gave rise to a risk of indirect confusion.
As to whether or not the preexisting trademark was a famous mark, it was sufficiently
proven in these proceedings that it was.
In the case of different goods and services that did not compete with each other, the mark applied
for could lead consumers to believe that such goods and services originated from one of thecompanies that participated in or sponsored the famous sports competitions organized andcommercialized by the opposing party.
With respect to invalidity on the grounds of unfair competition, such grounds would have applied“when the new mark for which registration is sought ... gives the examiner cause to presume ‘badfaith,’ ‘unfairness,’ or intent to misappropriate or unduly profit from another’s mark or prestige.”
The word mark applied for made the hypothesis of unfair competition likely. The application for amark similar to the preexisting trademarks of the opposing party was not mere coincidence, rather
it was one in series of applications for marks that were purposefully similar to the opposing party’s
trademarks.
This allowed for the assertion that in filing the contested application, the Applicant had acted inbad faith as he had abused the trademark application procedure by filing applications with theintent of misappropriating a mark that he had not created, thus contravening fair industrial andmarket practices.
10. Tags① Type of trial

Opposition proceeding② Decision

Rejection③ Type of bad faith✓Free Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others344

VIETNAM
SNAPCHAT vs. SNAPCHAT
1. Title

SNAPCHAT vs. SNAPCHAT

2. Country

Vietnam3.
Court/Other
Authorities
4. Case No.

National Office of Intellectual Property of Vietnam (“NOIP”)

5. Date of the judgment

6 June 2018

6. Parties: Plaintiff

Snap Inc. at 63 Market Street, Venice, California 90291, United States
Mr. Nguyen Hung Cuong at No. 13 lane 612/50, De La Thanh Street, Ba
Dinh District, Hanoi, Vietnam
Plaintiff
Defendant(contested
trademark)Defendant
7. Mark

8. Outline of the caseA case in which the Defendant’s registered trademark was determined to be confusingly similar to
the Plaintiff ’s trademark, which was well known before the filing date of the Defendant’s
trademark. The Defendant’s trademark filing aimed to take advantage of the reputation andgoodwill attached to the Plaintiff ’s trademark.
9. Summary of the judgment
On 6 June 2018, the NOIP issued a decision on invalidation of the Defendant’s registration No.
245540 for “SNAPCHAT” for the services “Information transmission, computer-aided transmissionof messages andimages; communication transmission by using terminals (namely: computers, workstations);
paging services” in Class 38 and “Providing search engines for the Internet; providing means ofsearching for others; providing online websites according to customers’ requirements”. In theinvalidation action, the Plaintiff successfully argued that:(i)

The Plaintiff was the owner of the trademark “SNAPCHAT” for various goods/services,
including but not limited to goods and services in Classes 09, 36, 38, 41, 42 and 45, which waswell known in many countries in the world and Vietnam prior to the filing date of the
Defendant’s trademark;(ii)

The Plaintiff ’s mobile application “SNAPCHAT” was introduced in the App Store (for iOS
operating system) in September 2011 and on Google Play (for Android operating system)
several years earlier and had been provided to users all over the world and in Vietnam sincethen, with users in over 70 countries in the world;

345

(iii)The Plaintiff’s trademark “SNAPCHAT” had earned well-known status and was used bymany celebrities. Thus, the Defendant’s filing of an identical trademark for the same services
may cause adverse effects to the Plaintiff and cause confusion to consumers between the twoparties’ trademarks.

The Defendant failed to respond to the invalidation action within the time allotted.
Upon reviewing the invalidation action together with the supporting evidence/information, theNOIP agreed with the Plaintiff ’s request for invalidation, and decided to invalidate the Defendant’s
trademark “SNAPCHAT” forall services, reasoning that the Defendant’s trademark failed to meet the criteria for protection
because it was confusingly similar to the trademark of the Plaintiff—a company withwell-known status and reputation with regard to the trademark SNAPCHAT around theworld, as shown by its large number of consumers.
Furthermore, since the Plaintiff ’s trademark was well known and familiar to many people, the actof registration and use of the Defendant’s trademark “SNAPCHAT” would cause confusion to
consumers.
10. Tags① Type of trial

Invalidation
actiontrademark registration② Decision

Invalidation③ Type of bad faith✓Free Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others346

againstaHyundai vs. Hyundai for electric bicycles
1. Title

Hyundai vs. Hyundai for electric bicycles

2. Country

Vietnam

3. The competentauthority
issuing
decision
4. Case No.

Ministry of Science and Technology

5. Date of the decision

18 January 2016

6. Parties: Plaintiff

Hyundai Motor Company
Vietnam Hyundai Electronics Co., Ltd.

15/KL-Ttra

Defendant
7. Mark

Plaintiff

Defendant

HYUNDAIHYUNDAI for electric bicycles

8. Outline of the case
The Defendant used a registered trademark of the Plaintiff to distribute electric bicycles. The
Plaintiff had never manufactured and distributed such goods. The Defendant also used thePlaintiff ’s

trademark

in/on

its

trade

name,

business

means

and

its

domainname<hyundai-ebikes.vn> to cause confusion, implying a relationship between the Defendant and thePlaintiff.
9. Summary of the judgment
The act of trading electric bicycles bearing the “HYUNDAI” sign, which was confusingly
similar to the registered trademark of the Plaintiff, was an infringement of theirtrademark rights.
The use of the “HYUNDAI” sign, which was confusingly similar to the registered trademark of
the Plaintiff, in the trade name (i.e. Vietnam Hyundai Electronics Co., Ltd.) and business means,
was an infringement oftrademark rights.
The registration and use of the domain name <hyundai-ebikes.vn>, which was mainly constitutedby thetrademark of the Plaintiff, caused confusion as to the relationship between the Plaintiff and the
Defendant. These acts were regarded as acts of unfair competition in industrial property.
Based on a comprehensive evaluation of these facts, it could be recognized that the Defendant,
which was aware that the Plaintiff ’s trademark was famous, deliberately distributed and promoted
electric bicycles bearing the Plaintiff’s trademark in order to ensure that traders and consumers
misunderstood that the Plaintiff manufactured and distributed such goods. The Defendant used thePlaintiff ’s trademark for the illicit purpose of taking advantage of the reputation of the Plaintiff’s
347

trademarks.
10. Tags① Type of trial

Complaint
trademarkcompetition② Decision

about infringement ofrightsandunfairSanction of administrative
violations and forced cessationof trademark infringement③ Type of bad faith✓Free Ride
Imitation by agents or people who have a priorrelationship
Interference by a competing company
Lack of intention to use
Others348

Appendix
List of the Contributors - Bad Faith Case
Summaries of Other Countries/Regions
September 19, 2018
Jurisdiction
Sending office
Argentina

Diego Laurini
Estudio Gold
Av. del Libertador 6550 3er piso
C1428ARV Buenos Aires Argentina.
Tel : 54 11 4788 8448
Fax: 54 11 4788 3068
legal@mggold.com.ar
Héctor D. Palacio
PALACIO & ASOCIADOS
www.palacio.com.ar
Av. Corrientes 1386 piso 13 (1043)
Buenos Aires - Argentina
Tel : (5411) 5353 0355
Fax: (5411) 5353 0356
palacio@palacio.com.ar

Armenia

Vahagn PETROSYANPETOŠEVIĆ
www.petosevic.com/
Tel : +32 2 688 33 15
Fax: +32 2 688 33 16
Yuliya Prokhoda
INTELS International Network Ukraine
www.intels.ua
1, Vasylkivska Street, office 304/3
Kyiv, 03040, Ukraine
Mob: (380-50) 357 16 05
Tel : (380-44) 230 60 54
intels@intels.ua
intels.ua@gmail.com

Australia

Tim MahoodPartner
Hudson Gavin Martin
Tel : +64 9 308 7302
Mob: +64 20 440 0123
Tim.Mahood@hgmlegal.com

AustriaMMag. Dr. Julia KusznierCounselSCHINDLER ATTORNEYS
www.schindlerattorneys.com
Tuchlauben 13 Entrance: Kleeblattgasse 4349

1010 Vienna Austria
Tel : +43 1 512 2613 290
Mob: +43 676 840080 290
Fax : +43 1 512 2613 888
julia.kusznier@schindlerattorneys.com
BrazilRodrigo A. de Ouro Preto Santos
www.ouropreto.adv.br
Rua Visconde de Pirajá, nº 430, 10º andar
22.410-002, Ipanema, Rio de Janeiro, RJ
Rio de Janeiro São Paulo
Tel : +552122632011
Mob: +5521991148224
Martin Pittaluga Pereira
Partner/SocioPITTALUGA Abogados
www.pittaluga.com
Echevarriarza 3535, Suite 1601
11300 Montevideo URUGUAY
Tel : +598 2 623 2959
Mob: +598 95 886041
martin@pittaluga.com

Cambodia

Colombia J. Ian Raisbeck
ian.raisbeck@roclaw.co

CanadaMichelle Nelles
Torys LLP
www.torys.com
79 Wellington St. W., 30th Floor, Box 270,
TD South Tower Toronto, Ontario
M5K 1N2 Canada
Tel : 416.865.7979
Fax : 416.865.7380
1.800.505.8679
mnelles@torys.com

Chile

Arturo Covarrubias
Covarrubias & Cía
www.cs.cl
Enrique Foster Sur 39, piso 09, Las Condes
Santiago Chile
Tel : (562) 28872300

Colombia

Helena Niño Kiriakidis
raisbeck & castro
www.roclaw.co
Calle 90 No. 19 – 41, Oficina 404
Bogotá D.C., Colombia 110221
Tel : +57 (1) 7043275
Fax : +57 (1) 7043276
Mob: +57 312 5713849
helena.nino@roclaw.co350

Costa Rica

Giselle Reuben
Partner
BLP
blplegal.com
Tel : +506 2205 3931
Mob: +506 8341 8936
greuben@blplegal.com

Croatia

Carla Biancotti
VUKMIR & ASSOCIATES
Gramača 2L, 10000 Zagreb, Croatia / Hrvatska
Tel : +385 1 376 0511
Fax: +385 1 376 0555
carla.biancotti@vukmir.net

Cuba

Urko OchoaMINIÑO
www.minino.com.do
Torre Acrópolis Center, Piso 11
Av. Winston Churchill 1099, Santo Domingo,
República Dominicana
Tel : 1 809 566-7414
Fax: 1 809 567-9628
urko.ochoa@minino.com.do

EcuadorLuis Marin Tobar
Pérez Bustamante & Ponce
https://www.pbplaw.com/es/#
Av. República de El Salvador N36-140
Edif. Mansión Blanca Quito, Ecuador
PBX: 4007862
Tel : +593 2 3827640 (ext. 7862)

FinlandHenrik af Ursin
Counsel, Head of Intellectual Property
DITTMAR & INDRENIUS
www.dittmar.fi
Pohjoisesplanadi 25 A FI-00100 Helsinki Finland
Tel : +358·9 681 700
Tel : +358·9 681 70128
Mob: +358·50 362 9565
henrik.afursin@dittmar.fi
Business ID: 0217099-4

FranceNathalie Dreyfus
nathalie.dreyfus@dreyfus.fr

Germany

Martin Mueller
Mueller@bettinger.deRichard Dissmann
Richard.Dissmann@twobirds.com
Helen Lange
Helen.Lange@twobirds.com

Honduras

Ricardo Mejía
Socio/Partner

Bufete Mejia & Asociados
351

www.bufetemejia.com
y 2 Calle S. O., 20 Ave. “A”, Bo. Rio de Piedras
P.O. Box 1744, San Pedro Sula, Honduras, C. A.
Tel : (504) 2550-7744, (504) 2552-8615(504) 2550-2624,+1 (914) 412-5719
Fax: (504) 2550-0795, (504) 2552-8570, +1 (718) 732-2118
rmejia@bufetemejia.com
Hong Kong SAR

Alan Chiu
ELLA CHEONG & ALAN CHIU, Solicitors & Notaries
www.ellalan.com
26/F, The Hennessy, 256 Hennessy Road,
Wanchai, Hong Kong
Tel : +852 3752 3866
Fax: +852 6839 6161 (HK), +86 139 1147 4826 (PRC)
alan.chiu@ellalan.com

Hungary

Aron Laszlo
attorney-at-law (Hungary),
partner
oppenheim
www.oppenheimlegal.com
1053 Budapest, Károlyi u. 12.
Tel : +36 1 486 2200
Mob: +36 30 982 6444
aron.laszlo@oppenheimlegal.com

India

Mamta Rani Jha
Inttladvocare
www.inttladvocare.com
Express Trade Tower 1st Floor, Tower 1 B-36,
Secto-132 Noida Expressway, Noida 201303
National Capital Region of Delhi. INDIA
Tel : +91 120 2470200 - 298 (Ext.126)
Fax: +91 120 2470299
mamta@inttladvocare.com

IranSara Paydar
sara@irantm.com

Ireland

Alistair Payne
AcuatusTel : 019618928 (Irl)
Tel : +353 1 9618928 (Int)
Mob: +353 87 6196985
alistairpayne@acuatus.com

IsraelEran Soroker
Advocate, PARTNER
Soroker Agmon Nordman
Advocates & Patent Attorneys
www.ip-law.legal
8 Hahoshlim St., P.O.B 12425,
Herzliya 4672408 ISRAEL
Tel : +972 9 950 7000
Fax: +972 9 950 5500

352

Tel : US +1 212 999 6180
eran@ip-law.legal
Italy

Nicoletta Colombo
CREA Avvocati Associati
Via del Lauro, 9 - 20121 Milano
Tel : +39 02 898 368 00
Fax: +39 02 898 368 99
n.colombo@crealaw.com

Kenya

John Syekei,
Head of Intellectual Property
www.bowmanslaw.com
COULSON HARNEY LLP
5th Floor, West Wing, ICEA Lion Centre
Riverside Park, Chiromo Road, Nairobi
PO Box 10643-00100, Nairobi, Kenya
Tel : +254 20 289 9000, +254 70 996 6000
Tel : +254 20 289 9312 (D)Mob: +254 71 796 7683
john.syekei@bowmanslaw.com
SHEM OTANGA
Senior Associate
ALN
www.africalegalnetwork.com
A The Oval, 3rd Floor, Junction of Ring Rd. Parklands & Jalaram Rd.
P P.O. Box 200-00606, Nairobi, Kenya
Tel : +254 (0)20 364 0000
Tel : +254 (0)20 364 0310 (D)Mob: +254 (0)703 032 310
soo@africalegalnetwork.com

LatviaIngrida Karina-BerzinaPartner
COBALTwww.cobalt.legal
Marijas iela 13 k-2, LV-1050 Riga, Latvia
Tel : +371 6720 1963
Mob: +371 2862 4842
ingrida.karina-berzina@cobalt.legal

Malaysia

Karen Abraham
Partner
Shearn Delamore & Co.
www.shearndelamore.com
7th Floor, Wisma Hamzah-Kwong Hing
No 1 Leboh Ampang 50100 Kuala Lumpur Malaysia
Tel : 603 20272893 (Direct), 603 20272727 (General)
Fax: 603 20722758 / 20341889 (Intellectual Property)

MyanmarMamta Rani Jha
Inttladvocare
www.inttladvocare.com
Express Trade Tower 1st Floor, Tower 1 B-36,

353

Secto-132 Noida Expressway, Noida 201303
National Capital Region of Delhi.INDIA
Tel : +91 120 2470200 - 298 (Ext.126)
Fax: +91 120 2470299
mamta@inttladvocare.com
New Zealand

Tim MahoodPartner
Hudson Gavin Martin
Tel : +64 9 308 7302,

Mob: +64 20 440 0123

Nigeria

Akeem O. Aponmade
Shwe’s groupakeem@aponmadelaw.com

Pakistan

Sana Shaikh
ELLANI & VELLANI Advocates
http://www.vellani.com/associates.html#l5
148, 18th East Street, Phase I,
Defence Officers' Housing Authority,
Karachi-75500 - Pakistan
Tel : +92 (21) 3580 1000
Fax: +92 (21) 3580 2120
sana.shaikh@vellani.com

Paraguay

Leticia de Fernández
Attorney at Law
SERGIO FERNANDEZ & ASOCIADOS
www.fersa.com.py
Prof. Enciso No. 2003 c/Capitán Montanaro
Asunción, Paraguay
Tel : 595-21 213260
Fax: 595-21 229025
Martin Pittaluga Pereira
Partner/SocioPITTALUGA Abogados
www.pittaluga.com
Echevarriarza 3535, Suite 1601
11300 Montevideo URUGUAY
Tel : +598 2 623 2959
Mob: +598 95 886041
martin@pittaluga.com

Peru

Juan Carlos Durand Grahammer
DURAND ABOGADOS
http://www.hda.com.pe
Av. Salaverry 2415 Oficina 305 Lima 27 PerúTel : (511) 222 5950
Fax: (511) 222 6068
jcd@hda.com.pe

Philippines

Andre Philippe G. Betita
BCCSLAW
www.bccslaw.com
Suite 1104, Page One Bldg., 1215 Acacia Ave.,
Madrigal Business Park Ayala Alabang,354

Muntinlupa City 1780, Philippines
Tel : +63 2 555 1750, +63 2 822 4665, +63 917 791 9688
andre.betita@bccslaw.com
RussiaOlesya Zakharova (Ms.)
Patent & Law Firm YUS
www.yus.ru
3rd floor, Business-Centre “Meliora Place”, d.6,
Prospekt Mira, Moscow, 129090, Russia
Tel / fax : +7 495 685-93-80, ext. 120
zakharova@yus.ru

SerbiaMilan Milojevic
MSA IP- Milojevic, Sekulic and Associates
Karadjordjeva 65, 11000 Belgrade, Serbia
Tel : +381 11 785 68 20
Mob: +381 66 5125 637
Fax : +381 11 414 09 90
milan.milojevic@msa-iplaw.com

Singapore

Prithipal Singh
Aditi Pranav Desaimirandah asia (singapore) pte ltd
www.mirandah.com
1 Coleman Street #07-08 The Adelphi
Singapore 179803
Tel : +65 6336 9696
Fax: +65 6338 3739
singapore@mirandah.com
Co. Reg. No. 200408353D

Spain

Ernesto Cebollero
Abogado / Attorney
FJF LEGAL
www.fjflegal.com
C/ Velázquez 78, 5º Izq. 28001 Madrid Spain
Tel : +34 91 466 99 41
Fax: +34 91 431 14 25
ecebollero@fjflegal.com

SwedenCharlotte Nörklit
Senior Associate
Advokatfirman Lindahl KB
P.O. Box 1065, 101 39 Stockholm, Sweden
Tel : +46 8 527 70 800
Tel : +46 8 527 70 943 (D)Mob: +46 70 617 72 78
Fax : +46 8 667 73 80
VISITORS Mäster Samuelsgatan 20charlotte.norklit@lindahl.seCharlotte.Norklit@lindahl.se (Sweden Charlotte Nörklit)

Switzerland

Stefano Codoni
Walder Wyss Ltd.
www.walderwyss.com
Via F. Pelli 12, P.O. Box, 6901 Lugano, Switzerland
Tel : +41 58 658 40 00

355

Fax: +41 58 658 59 59
stefano.codoni@walderwyss.com
Taiwan RegionPeter J.Dernbach譚璧德Partner合夥律師(外國法事務律師)
www.winklerpartners.com
Tel : 886 (0)2 2311 2345 # 222
Fax: 886 (0)2 2311 2688
pdernbach@winklerpartners.com

ThailandDhanasun Chumchuay
Associate
SPRUSON & FERGUSON LTD.
www.spruson.com
Nos. 496-502 Amarin Plaza Building,
Unit Nos. 1806-1807, 18th Floor,
Ploenchit Road, Lumpini Sub-District,Pathumwan District,
Bangkok Metropolis 10330
Tel : +66 2 256 9164
Fax: +66 2 256 9162
mail.asia@spruson.com

UAE

Raka Royraka@unitediplaw.ae

UK

Roland Mallinson
PartnerTaylor Wessing
www.taylorwessing.com
Tel : +44 20 7300 7081
Mob: +44 7733 124314

UkraineTaras Kulbaba
Senior Associate
PETOŠEVIĆ
petosevic.com
Tel : +32 2 688 33 15
Fax: +32 2 688 33 16
taras.kulbaba@petosevic.com
Yuliya Prokhoda
INTELS International Network Ukraine
www.intels.ua
1, Vasylkivska Street, office 304/3
Kyiv, 03040, Ukraine
Mob: (380-50) 357 16 05
Tel : (380-44) 230 60 54
intels@intels.ua
intels.ua@gmail.com

Uruguay

Martin Pittaluga Pereira
Partner/SocioPITTALUGA Abogados
www.pittaluga.com

356

Echevarriarza 3535, Suite 1601
11300 Montevideo URUGUAY
Tel : +598 2 623 2959
Mob: +598 95 886041
martin@pittaluga.com
Venezuela

Daniela Rojas
Special Foreign Counsel
Hilborne Hawkinwww.hilbornehawkin.com
2875 Michelle Drive Suite 170
Irvine, California 92606 USA
Tel : 714.283.1155 x1006
Fax: 714.283.1555

Viet Nam

Linh Thi Mai Nguyen
Attorney-at-Law
Head of Trademark Vietnam
Tilleke & Gibbins
www.tilleke.com
HAREC Building, 4th Floor, 4A Lang Ha Street,
Ba Dinh District, Hanoi, Vietnam
Tel : +84 24 3772 5559 (D)Tel : +84 24 3772 6688
Fax: +84 24 3772 5568
mailinh.n@tilleke.com

NZ + AUTim Mahood
Hudson Gavin Martin
Tel : +64 9 308 7302
Mob: +64 20 440 0123
Tim.Mahood@hgmlegal.com

357