On May 8th, 2019, the administrative dispute cases of trademark invalidation request between Bickiepegs Limited and Ballack & Tony Limited came to trials in Beijing Intellectual Property Court (Beijing IP Court). Tee & Howe’s senior attorney-at-law Mr. Hong ZHENG appeared in court on behalf of the plaintiff Bickiepegs Limited and won crucial victories in both two cases. Beijing IP Court ruled to cancel the decisions of the China National Intellectual Property Administration (CNIPA), and ordered the CNIPA to re-issue decisions on the plaintiff's invalidation requests.
In this case, the plaintiff Bickiepegs Limited is a famous British child teething biscuit production company. “Bickiepegs" is the plaintiff's brand name which has been in commercial uses for more than 90 years and enjoys a certain popularity and reputation among Chinese consumers. The registrants of the disputed trademarks firstly established a company in New Zealand, and then filed two trademark applications for “Bickiepegs" in the name of New Zealand entities for Classes 5 and 30 covering baby food, biscuits, etc. Due to the lack of evidence for extensive use and promotion in China, the CNIPA ruled that the two trademark registrations did not constitute damage to any prior rights of Bickiepegs Limited and maintained the two registrations. Bickiepegs Limited was unsatisfied with CNIPA’s decisions and filed lawsuits with Beijing IP Court.
With regard to this case, in addition to exploring more evidences on proving the Bickiepegs Limited’s reputation in China, Mr. ZHENG has also emphasized and made insight analysis to the bad-faith aspects of registrations during the lawsuits. Mr. ZHENG argued that the registrant concealed and changed its identity several times to avoid services of court documents. Besides, the registrant had no actual business operation in New Zealand and filed multiple trademark applications stretching over a variety industries under different classes, all of which strongly demonstrated the bad
faith and lack of “real intention of use” of the registrant. Beijing IP Court fully adopted Mr. ZHENG’s arguments and held the opinion that the bad-faith registrations had eroded China’s trademark registration mechanism and undermined the public interests. Accordingly, Beijing IP Court canceled CNIPA’s rulings and ordered the CNIPA to re-issue decisions on the invalidation requests. Both parties had not filed appeals against the judgment which had come into effect now.
The favorable judgments will be of vital importance for Bickiepegs Limited, which removes the obstacles for its embark on the Chinese market. Meanwhile, the judgments in favor of real right owner also prove that in recent years the Chinese government has been stepping up efforts to combat against bad-faith applications and to create a fairer market order.
Author: Hong Zheng