Administrative Dispute between the American Chamber of Commerce in China and the American Club about the Re-examination of Opposition of "AMCHAM" Series Trademarks
Judgment Document No.: 二审行政（2016）京行终2656/2657/2691/2799/2802/2819/号 Judgment Date: 2017-07-31
The American Chamber of Commerce in China was established in 1991 with the approval of the Ministry of Commerce of China (formerly the Ministry of Foreign Trade and Economic Cooperation) and registered with the Ministry of Civil Affairs of China. "AmCham" is the shorter form for its English name, which has been widely used and publicized by the American Chamber of Commerce in China (hereinafter referred to as the AmCham) as its English abbreviation and trademark since establishment.
From 1996 to 1997, the legal representative of the American Club acted as the director of the AmCham. Then he registered 39 "AmCham" series trademarks in the name of the American Club, which mainly classified as Class 9, Class 18, Class 21, etc. Among them, 29 trademarks got involved in these administrative dispute cases. As the Trademark Appeal Board (hereinafter referred to as the Board) judged, the American Club had registered more than 20 "AmCham" series trademarks with an obvious malicious intention. Its trademarks’ registration had infringed the trade name right of the AmCham by violating the Article 32 of the Trademark Law of the People’s Republic of China (hereinafter referred to as Trademark Law), which referred to the position of an application prejudicing pre-existing right of others. Therefore, the Board had finally rejected the registration of the "AmCham" series trademarks by the American Club.
With regard to the first six administrative dispute cases about the re-examination of opposition of "AmCham" series trademarks sued by the American Club, Beijing Intellectual Property Court ruled that the disputed trademarks’ designated goods or services were different from those of the AmCham, which would not cause confusion, and thus would not infringe the trade name right of the AmCham. Therefore, the Court withdrew the administrative decision made by the Board, without supporting the claim in Paragraph 1, Article 44 in the Trademark Law. However, in the Second Instance, as the Beijing Higher People's Court ruled, based on the fact that the AmCham had already used the symbol "AmCham", the American Club’s later registration applications of the "AmCham" series trademarks in a large number of classes of goods or services were not justified, which had violated the basic principle of good faith in the Trademark Law, disturbed the normal order of trademark registration management and further broke the market order of fair competition. Therefore, in accordance with the provision in Paragraph 1, Article 44 in the Trademark Law, which prohibited the acquisition of trademark registrations by fraud or any other illicit means, Beijing Higher People's Court had rejected the registration of the "AmCham" series trademarks by the American Club, withdrew the First Instance rulings and dismissed the American Club’s claims. As for the subsequent 23 administrative dispute cases about "AmCham" series trademarks, Beijing Intellectual Property Court and Beijing Higher People's Court had directly dismissed the American Club’s claims on the same grounds and legal basis as the former cases.