China IP,[Trademark]

CASE 12:
◆ First Instance: (2014) YiZhongZhiXingChuZi No. 5641
◆ Second Instance: (2016) JingXingZhong No. 2280
◆ Reconsideration: (2018) ZuiGaoFaXingZai No. 22
Beijing Municipal
To determine whether an agent has committed trademark squatting, the legislative principle of “good faith” should be followed, rather than to deny application of Article 15 of the Trademark Law of 2001 for “lack” of agency relationship. Article 15 may be applied also in the “bargaining stage.”
Plaintiff: Andis Company
Defendant: State Administration for Industry & Commerce/Trademark Review & Adjudication Board (TRAB)
Third Party: Beilun Bofa Hair Styling Tools of Ningbo, Co., Ltd. (Beilun)
Between February and May of 2009, Beilun and Andis conducted intense business negotiations over cooperation on trimming tools for animals, but the two did not officially form “agency relationship.”
On June 24, 2009, Beilun filed a trademark application for “ 安迪 士andis” under No. 7494974 (the opposed mark), designating “animal groomers and electric clippers” in class 7.
On August 3, 2012, Andis raised opposition against the opposed mark, on the grounds that the mark is similar to the cited mark ANDIS for electric groomers and electric trimmers in class 8; that the applicant Beilun, after business negotiations with Andis, has committed bad faith trademark squatting of another’s mark as an “agent” in obtaining the opposed mark.
Andis’ claim was found to be unwarranted by the Trademark Office, the TRAB, and the courts at both instances. Andis petitioned the Supreme People’s Court (SPC) for reconsideration, which finally sustained Andis’ request and rejected the application of the opposed mark.
[Judge's Comments]
The SPC decision in reconsideration reiterated the legislative principle of good faith in trademark application for registration, representing a firm deterrence of bad faith trademark registration. This case also reflects the Court’s guiding principle for applying Article 15 of the Trademark Law. An agent or a representative relationship is a special kind of fiduciary legal relationship, because of which the agent or representative carries the trust and duty of diligence of the principal, and must faithfully execute its duties in the best interest of the principals.
The SPC also took into consideration of the change in the relations between goods in line with social development, stressing that the Classification of Goods and Services is not the only standard, let alone the fundamental standard, for determining whether the relevant goods are similar, and found that the animal groomers and electric clippers of class 7 are sufficiently similar to the electric groomers and electric trimmers of class 8.
(Translated by Zheng Xiaojun)

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