Posted on: September 7, 2016

The plaintiff, Henan Hua Hua Niu Group, is the right holder of series marks “Hua Hua Niu in Chinese and logo” registered under Nos. 1185340, 1199434, 3234059 and 3234689 in Class 29 (cited marks). The group is the largest dairy products manufacturers in Henan province, and their product series banded with “Hua Hua Niu (in Chinese)” take up 80% of the market in the province with sales topping the market since 1999.

On April 11, 2003, Henan Zhengniu Foods filed application for “HUAHUANIU” trademark (the disputed trademark) in respect of “Beers, Juices, Water (Beverage), Mineral Water (Beverage), Vegetable Juices (Beverage), Non-alcoholic Beverages, Sodas, Colas, Plant-based Beverages, Beverage Preparations” in Class 32.

After losing trademark opposition, opposition review, and the administrative litigation concerning the opposition review decision, Henan Hua Hua Niu group initiated an invalidation proceeding against the disputed trademark at the Trademark Review and Adjudication Board in September 2014 on the grounds that 1) the disputed trademark and the cited trademarks constitute similar trademarks in respect of similar goods, which would confuse and mislead the consumers; 2) the registration of the disputed trademark has infringed on the trade name right of the plaintiff; 3) Henan Zhengniu company’s registration of the disputed trademark is in violation of the principle of good faith and bears ill intent of taking advantages of a well-known trademark; and 4) the registration of the disputed trademark is deceptive, leading consumers to misperception and causing ill influences among the society. The Review and Adjudication Board made a decision to maintain the disputed trademark in September 2015. In dissatisfaction, Henan Hua Hua Niu brought the administrative litigation case in Beijing IP Court within the statutory time limit.

As the challenge of the case is at determination of the similarity of goods, Unitalen team devised an effective strategy after studying the case: Firstly, the reason why the Trademark Review & Adjudication Board did not support the plaintiff’s claim at the examination stage, is largely due to the reference they made to a court judgment 2010 in which the goods under the disputed mark are considered dissimilar to those under some of the cited marks. However, according to the 2014 version of the Guidebook for Similar Goods and Services, the designated goods of the disputed mark are considered similar to those under some of the cited marks. Therefore the 2010 judgment shall not be binding upon this case as it was made based on the facts and legal conditions of 5 years ago. Secondly, the designated goods of the disputed trademark are very similar to those of the cited marks in terms of function, usage, production and target consumer. Lastly, the plaintiff supplemented substantial evidences during the litigation to prove the cited marks had enjoyed higher publicity through propaganda prior to the filing date of the disputed trademark and the Henan Zhengniu Foods was with obvious ill intent.

After hearing, Beijing IP Court made a judgment to revoke the TRAB’s decision and ordered TRAB to make a new one. Since the first filing of opposition in 2004, Henan Hua Hua Niu had experienced opposition, opposition review, administrative litigation concerning the opposition review decision, invalidation, and at last the administrative litigation concerning the invalidation decision for a duration of 12 years in total. By the persistent pursuit of right protection, Henan Hua Hua Niu finally won a satisfactory victory and cleared up the obstacles around their core products.