The plaintiff:

TAGIA COMERCIO E IMPORTACAO LTDA

VS. 

The defendant:

Wenzhou Naxin Auto Parts Co., LTD

Case Summary

The prior "TAKAO" trademark is a famous brand registered and continuously used in Brazil for long time, created by the The plaintiff TAGIA COMERCIO E IMPORTACAO LTDA. This trademark was first applied for registration on March 11, 2010, and was officially approved for protection on December 18, 2012 in Brazil.

In the earlier days of the contested mark “TAKAO” being registered, there was a business contact between the plaintiff and the defendant. The plaintiff also had related proof that it had ordered products from other manufacturers in China, which havd proved a fact that the defendant maliciously registered plaintiff’s mark TAKAO in China without authorization.

The contested trademark "TAKAO" is visually identical to the plaintiff’s "TAKAO" trademark from design elements to layout, constituting a similar trademark.

After knowing the prior mark registered by other party with bad faith, the plaintiff shall file the request for invalidation action on March 22, 2018. But the TM Office ruled to maintain original registration of this contested mark. The plaintiff was dissatisfied with the decision and then filed a lawsuit with the Beijing Intellectual Property Court on June 19, 2019. After the Beijing Intellectual Property Court made its judgment, the National Intellectual Property Administration appealed to the Beijing Higher People's Court with opposed opinion. Finally, the Beijing Higher People's Court rejected the appeal and upheld the original judgment.

Case Facts:

1.The plaintiff has provided evidence of prior use “TAKAO” trademark, including the Brazilian registration and trade transactions in China. While the defendant could not provide proper evidence proofing its actural use earlier than the plaintiff’s.

2.Emails between the plaintiff’s shareholder Mr. Wang and the defendant’s legal representative clearly prove there was really existing an indirect business relationship between both parties.

3.The contested trademark is similar to the plaintiff’s existing mark, and also the business contact has indicated that the defendant knew it before.

4. The goods covered by the contested trademark are identical or have a significant correlation with the goods by the plaintiff’s trademark in terms of functional use, production department, sales channel, consumer target, etc., thus constituting similar trademarks.

Thus, the contested trademark falls under the circumstances in Article 15(2) of the Trademark Law.

Case Outcome:

In the stage of invalidation proceedings, the National Intellectual Property Administration initially did not find defendant’s violation act according to Article 15(2) in Trademark Law . Then the Beijing Intellectual Property Court ruled in favor of the plaintiff 's lawsuit. But The National Intellectual Property Administration was against it in the first instance court and continued to appeal to the Beijing High People's Court. At last, the second instance court upheld the first instance judgment of the Beijing Intellectual Property Court after hearing the case. Thus, the final decosion is issued as follows:  

According to Article 15(2) of the 2013 Trademark Law of PRC, and Article 45(1)(2),  Article 46 of the 2019 Trademark Law of PRC, the contested trademark (registration no. 27842736 ) is declared invalid.