Unitalen Represented "Power Dekor" to Snipe at the "Free-Riding" Cross-Class Registration, and Succeeded in Revoking the Sued Ruling

December 26, 2022

Case Summary:

Power Dekor Group is the prior right holder of the trademark and name "圣象" (Shengxiang), and is entitled to the exclusive right to use the trademarks "" and "" on the goods of "Floor Boards" etc. in Class 19. The trademark "圣象" (Shengxiang) has been used continuously since 1996 and has a high reputation and influence, and has been given legal protection in administrative cases and civil infringement cases many times.


The disputed trademark is the trademark "" in Class 41, which was applied for registration by YIN, an individual business, on June 11, 2019 in services of "Educational services; Nursery schools; Organization of exhibitions for cultural or educational purposes; Television entertainment; Party planning [entertainment]; Providing sports facilities; Providing recreation facilities; Club services [entertainment or education]; Holiday camp services [entertainment]; Health club services [fitness and physical training]", etc., and was approved for registration on February 7, 2020.

In the Sued Ruling regarding the invalidation against the disputed trademark, the China National Intellectual Property Administration (CNIPA) held that: although the cited trademarks were once recognized as well-known trademarks in China, the disputed trademark was designated for use in services of "Educational services; Sports facilities; Entertainment services" etc. in Class 41, while the trademark "圣象" (Shengxiang) was designated for use in goods of "Floor Boards" etc. in Class 19. There are obvious differences in terms of functional use, consumption place, consumer object, service purpose, etc. The registration and use of the disputed trademark would not mislead the public and damage the interests of the right holder of the cited trademarks. Therefore, the registration of the disputed trademark does not constitute the circumstances referred to in Article 13.3 of the Trademark Law, and the registration of the disputed trademark shall be upheld.

Power Dekor refused to accept the Sued Ruling and entrusted Unitalen to file an administrative lawsuit with the Beijing Intellectual Property Court. Upon a comprehensive analysis of the facts and evidence materials of the case, the attorney representing this case believed that: the registration of the disputed trademark violates the provision of Article 13.3 of the Trademark Law 2014; the cited trademarks have reached well-known prior to the date of application of the disputed trademark; although the approved services of the disputed trademark are not similar to the approved goods of the cited trademarks, they are related to a certain extent and the public may be easily misled; more importantly, the real identity of the registrant of the disputed trademark is an operator in the same industry, not a real business operator in "Educational service, Entertainment" services, and when applying for registration of the disputed trademark, this registrant should have known Power Dekor Group and the cited trademarks.

Court Decision:

Beijing Intellectual Property Court's first-instance judgment revoked the Sued Ruling and ordered the CNIPA to make a new decision.

Typical Significance:

The highlight of this case is that Unitalen attorneys have profoundly and accurately grasped the principle of "on-demand determining and individual case valid" in the Trademark Law on well-known trademarks. The precedent that the same trademark has been recognized as well-known in other earlier cases does not necessarily become a natural reason for obtaining well-known trademark protection in later cases.