Hublot successfully invalidates copycat trademark in China

Based in Switzerland, Hublot SA, Geneve is a wholly owned subsidiary of the LVMH Group, producing luxury watches that reflect Swiss watchmaking excellence. HUBLOT owns trademark registrations for  Hublotand ‘China’ (the Chinese counterpart of HUBLOT) in Class 14, designating watches among others.

On 15 July 2016 the Hong Kong company Hublot International Holding Co., Limited (“Hong Kong Hublot”) applied for and, on 7 September 2017 obtained, the registration of trademark ‘宇舶’ 20658185 in Class 10 in China, designating “physical exercise apparatus for medical purposes; esthetic massage apparatus; vibromassage apparatus; massage apparatus; medical apparatus and instruments; blankets, electric, for medical purposes; electric acupuncture instruments; surgical sponges; bed vibrators; soporific pillows for insomnia”.

On 12 November 2019, Hublot SA brought an invalidation proceeding against the aforesaid mark before the China National Intellectual Property Administration (CNIPA), arguing that Hong Kong Hublot acted in bad faith. Evidence revealed that Hong Kong Hublot filed a total of four trademarks before the CNIPA, three of which copied the Chinese counterpart, the Latin representation and the stylised H device of Hublot’s registered marks (as shown below). Hong Kong Hublot also represented itself as a Swiss brand and relied on the reputation of Hublot SA, in promoting and associating its products with high-end Swiss watchmaking technology.

Hublot

On 22 December 2020, the CNIPA issued a ruling invalidating the registration of the disputed mark on all designated goods, reasoning that Hong Kong Hublot exhibited bad faith in registering Hublot’s brands on dissimilar goods without reasonable explanation. This came under the circumstances of “acquiring registration by other unfair means”, as provided in Article 44.1 of the Trademark Law (2013).

The outcome of the case rested on whether the registration of the disputed mark was acquired by other unfair means. The CNIPA enumerated three circumstances in the Trademark Examination and Adjudication Criteria (2016) where “acquiring registration by other unfair means” could be established, including “where the applicant of the trademark at issue filed for registration of multiple trademarks, which are identical with or similar to others’ trademarks of strong distinctiveness”, without elaborating on the scope of “multiple” and “others”. The CNIPA decision may serve as a point of reference in interpreting and applying this particular clause.

The definition of ‘others’

In Article 17.3.(1) of its Guidelines for the Adjudication of Cases Involving Granting and Affirmation of Trademark Right (2019), the Beijing High Court elucidated that: “the applicant of the trademark at issue filed for registration of multiple trademarks identical with or similar to others’ trademarks of strong distinctiveness or of high reputation, including a) filing different brand owners’ trademarks in same or similar goods/services, or b) filing one particular brand owner’s trademarks in non-identical or dissimilar goods/services.”

The CNIPA apparently adopted the same methodology in ascertaining that Hong Kong Hublot registered Hublot SA’s distinctive cited trademarks in respect of non-identical or dissimilar goods/services, which warranted the application of the unfair means clause.

On 16 November 2021, the CNIPA released the Guidelines for Trademark Examination and Adjudication, which superseded the 2016 Criteria as of 1 January 2022. The CNIPA explicitly noted in Article 5.3, Chapter 2, Part 2 of the guidelines the scenario “where the applicant of the trademark at issue repeatedly filed for registration of one specific brand owner’s particular trademark of strong distinctiveness or with certain reputation so as to disrupt the trademark registration order” as an eligible circumstance of “filing a bad faith application for the registration of mark that is not intended for use”, as provided in Article 4 of the Trademark Law (2019). The 2021 Guidelines also open the door to the application of pertinent articles of the Trademark Law, in case repeatedly filing applications for registration fits other clauses regulating bad faith applications. This could serve as a fallback provision in determining the bad faith of “others” in both singular and plural form, as prescribed in Article 44.1 of the Trademark Law.

Article 4 of the Trademark Law states that “any bad faith application for the registration of a trademark that is not intended for use shall be rejected”. Article 4 was not applicable to the case at hand, since the application date of the disputed mark predated the 2019 amendment of the Trademark Law and the disputed mark has been put into actual use.

‘Multiple’ can be interpreted flexibly

The number of trademark applications filed by the applicant of the trademark at issue is another key parameter in assessing whether unfair means can be established. Other parameters to be considered include, but are not limited to, the degree of the distinctiveness and reputation of others’ brands, the use status of the disputed mark and how the applicant disposes of its trademarks, including inter alia, selling the trademarks for profit.

The lack of quantitative definition of ‘multiple’ caused concern to brand owners. It later transpired that the CNIPA and the courts interpret the scope of ‘multiple’ quite flexibly, with the amount varying from a dozen up to thousands. However, in the event that only a few copycat trademark applications/registrations are identified, brand owners must leverage other parameters or facts to substantiate an applicant’s bad faith. Although Hong Kong Hublot only filed for three copycat marks, by taking into account the distinctiveness and high reputation of Hublot’s brand, the CNIPA concluded that the registration of the disputed mark fell under the circumstances provided in Article 44.1 of the 2013 Trademark Law and should be invalidated.


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