CNIPA invalidates a copycat mark based on prior name right of a French designer

In an encouraging move for international trademark owners doing business in China, the China National Intellectual Property Administration (CNIPA) has invalidated a registered trademark on the basis of prior name rights, finding that the registration was made in bad faith, among others.

Constance Guisset is a famous French product and graphic designer, whose works have been presented in many internationally renowned design exhibitions.

On 23 August 2019, Chinese company Shenzhen Shengshi Yicai Lighting Co (Yicai Lighting) filed an application to register the trademark CONSTANCE GUISSET in Class 20, which was published on 6 January 2020. Guisset tried to block this registration through opposition proceedings but ultimately failed. The trademark was approved on 13 May 2021, after which Guisset initiated invalidation proceedings.

The CNIPA published its Trademark Examination and Adjudication Guidelines in 2021, which outline the circumstances where prior name rights can be used to challenge a trademark:

  • if the name has a certain degree of reputation and has an established relationship with a natural person with whom it is strongly associated by the relevant public;
  • if registration of said trademark may cause harm to the person’s name right; and
  • if the disputed trademark was filed without the authorisation of the name right owner.

The CNIPA also explicitly asserts:

The scope of protection of a prior name right shall be determined on a case-by-case basis by factoring in the degree of reputation of the name and the degree of association between the goods or services designated by the trademark and the domains where the name right owner is known. Any trademark applicant that knowingly attempts to register another’s name for the purpose of prejudicing the interests of such person, shall be deemed as a prejudice on the name right of that person.

As a player in the lighting, furniture and import/export business, Yacai Lighting knew, or at least should have known, the name “Constance Guisset”, yet it still sold a lamp incredibly similar to Ms Guisset’s design and made a reference to her name in the product description. The filing dossier of Yacai Lighting also corroborated the fact that it is not a first-time trademark infringer, as it had also applied for several copycat lighting brands including “Oslo Wood”.

On 27 June 2022, the CNIPA ruled to invalidate the registration of the CONSTANCE GUISSET mark on all designated goods, based on the following reasoning:

  • in the evidence provided by the invalidation petitioner, it was revealed that before the trademark’s application date, the name “Constance Guisset” was already associated with the petitioner, and was highly popular and influential in the furniture and home furnishing design industry, so Guisset has a claim on the prior name rights; and
  • the adverse party registered “Constance Guisset” on furniture and other goods without authorisation to exploit her reputation in the industry, which could mislead the relevant public to believe that Yicai Lighting had an established business relationship with Guisset, thus further prejudicing the petitioner’s prior name right. The registration of the disputed trademark was thus in violation of Article 32 of the Trademark Law.

Over the years, the CNIPA has become increasingly flexible in clamping down on bad-faith trademark filings, often weighing in on infringers’ bad faith and applying the Trademark Law. Proving bad faith is therefore crucial in fighting against trademark infringers. Other than looking into filing activities, brand owners should keep an eye on the actual use of the copycat mark and how the filer promotes its business; the combination of these relevant facts may help to establish the filer’s bad faith and build a stronger case.

This is an Insight article, written by a selected partner as part of IAM's co-published content. Read more on Insight

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