Art of Living International Foundation v. Trademark Review and Adjudication Board, Quanzhou Meili Asana Fitness Co., Ltd., Xiamen Meili Asana business Co., Ltd.

Art of Living International Foundation (referred to as Art of Living Foundation) and the State Administration for Industry and Commerce's Trademark Review and Adjudication Board (referred to as the Trademark Review and Adjudication Board), Quanzhou Meili Asana Fitness Co., Ltd. (referred to as Quanzhou Asana Company), Xiamen Meili Asana business Co., Ltd. (referred to as Xiamen Asana Company) trademark opposition reexamination administrative dispute case.

 

Case Number

Administrative Judgment (2017) No. 44 of the Supreme Court of the People's Republic of China

Case Introduction

The petitioner (plaintiff in first-instance, appellant in second-instance): Art of Life International Foundation

Respondent (defendant in first instance, appellee in second instance): Trademark Review and Adjudication Board

The third party in the initial trial: Quanzhou Meili Asana Fitness Co., Ltd.

The third party in the initial trial: Xiamen Meili Asana Business Co., Ltd.

The disputed trademark is the No. 6797428 “THE ART OF LIVING” trademark of Quanzhou Asana Company, which was applied for registration on June 23, 2008. The designated service is hospital, health care, physical therapy, hairdresser, nursing home, beauty salon, pet Feeding, garden design, glasses, and sanitary equipment rental. After the preliminary examination of the disputed trademark, the Art of Living Foundation filed an objection to the Trademark Office of the State Administration for Industry and Commerce of the People's Republic of China (the Trademark Office) within the objection period. The Trademark Office has made the No. 06019 decision on “生活的艺术THE ART OF LIVING" trademark objection that the disputed trademark was approved for registration.

The Art of Living Foundation dissatisfied with the above-mentioned decision of the Trademark Office and filed an objection review application with the Trademark Review and Adjudication Board on April 10, 2012. The main reasoning was as follows. 1.The disputed trademark infringed its trade name and copyright. 2. THE ART OF LIVING is a trademark used by the Art of Living Foundation and has a high reputation. It is a malicious hijacking by a disputed trademark applicant; Quanzhou Asana Company has not authorized the registration of the disputed trademark without the consent of the Art of Living Foundation. 3. The registration of the disputed trademark is easy to have negative influence. 4. Quanzhou Asana Company has malicious intention. Its behavior violates the principle of good faith. On October 9, 2013, the Trademark Review and Adjudication Board reviewed the case and ruled the trademark review decision (2013) No. 90185 on the No. 6797428 trademark of “The Art of Living” trademark opposition (referred to as Decision No. 90185). The ruling determined that. 1. The evidence submitted by the Art of Living Foundation is insufficient to prove that the Quanzhou Asana Company has an agent relationship under trademark law. The application for registration of the disputed trademark does not violate Article 15 of the Trademark Law. 2. The registration of the disputed trademark does not violate Article 31 of the Trademark Law that “the trademark applied for registration shall not infringe the existing prior rights such as trade name of others. 3. The evidence submitted by the Art of Living Foundation is not sufficient to prove that the “THE ART OF LIVING” trademark has been used on the identical or proximity goods as the designated goods of the disputed trademark before it is applied for registration. The application for registration of disputed trademark does not violate the second sentence of Article 31 of the Trademark Law. 4. The disputed trademark does not constitute the registration by deception or other improper means as referred to in the first paragraph of Article 41 of the Trademark Law. 5. The disputed trademark doesn’t violate Article 10 of the Trademark Law. In summary, under Articles 33 and 34 of the Trademark Law, the Trademark Review and Adjudication Board ruled that the disputed trademark was approved for registration.

The Art of Living Foundation filed a lawsuit with the Beijing No. 1 Intermediate People's Court. The court held that the existing evidence is insufficient to determine that the behavior of Quanzhou Asana Company violates Article 15 of the Trademark Law, nor can it prove that the registration of the disputed trademark violates Article 31 of the Trademark Law. The application for registration of the disputed trademark does not constitute Article 10 , 1 (8) of the Trademark Law, nor does it constitute the violation of the first paragraph of Article 41 of the Trademark Law. In summary, the Trademark Review and Adjudication Board ruled that the No. 90185 decision is correct and should be maintained. The Beijing No. 1 Intermediate People's Court ruled that the No. 90185 decision should be maintained.

The Art of Living Foundation appealed to the Beijing Higher People's Court. The court hold that the Trademark Review and Adjudication Board made the No. 90185 decision. In this case, the object for registration of the disputed trademark does not have the facts that are “harmful to socialism morality or other negative effects”, nor does it constitute damage to the public. The Art of Living Foundation’s trademark should be based on Article 10, paragraph 1 Item 8 of the Trademark law. The court of first instance found that the existing evidence was insufficient to determine that the behavior of Quanzhou Asana Company violated Article 15 of the Trademark Law. Dismissed the Appeal.

The Art of Living Foundation applied to the Supreme Court for retrial. The main reasoning are as follows. 1. The application for registration of the disputed trademark violates the Article 15 of the Trademark Law and should not be approved. 2. The application for registration of the disputed trademark has infringed the prior trade name of the petitioner and violated Article 31 of Trademark Law and should not be approved. 3. The application for registration of the disputed trademark constitutes a malicious hijacking of the trademark used by the petitioner which has certain popularity. It violates Article 31 of Trademark Law and should not be approved. 4. The application for registration of the disputed trademark violates the Article 10, paragraph 1 (8) of the Trademark law and should not be approved. 5. The application for registration of the disputed trademark with obvious malicious intention of the third party damaged the relevant public which constituted in the case of improper means of registration. The disputed trademark shall not be approved for registration under Article 41, paragraph 1 of Trademark Law.

The judgement of the Supreme Court

The court held that, according to the parties' opinions based on the facts ascertained by the first and second courts, the issue of the dispute in this case is whether the registration of the objection trademark violates the first paragraph of Article 10 (8), Article 15, Article 31, and Article 41 of the Trademark Law.

1. Whether the registration of the disputed trademark is in violation of the paragraph 1 (8) of Article 10 of the Trademark Law.

The "negative effects" constitute a limitation of "public interest" and "public management." The evidence submitted by the petitioner does not prove that the “art of living” and/or “THE ART OF LIVING” in China has a strong correspondence with the public interest. The registration of the trademark is not harmful to the socialist morality or public interest. It does not violate the Article 10, paragraph 1 (8) of the Trademark Law

2. Whether the registration of the disputed trademark violates Article 15 of the Trademark Law.

In this case, the respondent filed petitioner's "THE ART OF LIVING" and the "Sun Swan" pattern combination logo in Chinese for registration as a trademark. According to the habits of speak, “THE ART OF LIVING” is the main part of the “Art and Figure of Life” logo of the petitioner. Refer to the Interpretation of the Supreme People’s Court on Several Issues Concerning the Application of Law in the Trial of Trademark Civil Disputes. Under Article 9, the disputed trademarks and the “art and picture of life” of the petitioner constitute similar trademarks. The respondent registered the similar trademark of the petitioner during the negotiation. The application for registration as a trademark violates Article 15 of the Trademark Law.

3. Whether the registration of the disputed trademark is in violation of Article 31 of the Trademark Law.

According to the evidence submitted by the Art of Living Foundation, although the Art of Living Foundation opened the “Art of Living” related courses before the filling date of the disputed trademark. But the online media information does not show the “THE ART OF LIVING” logo advocated by the Art of Living Foundation, which is difficult to prove. “THE ART OF LIVING” advocated by the Art of Living Foundation has been well-known for hospitals, health care and other services which is proximity to the services designated by the disputed trademark. It is also difficult to prove that the registration of the trademark may cause damage to the public.  Similarly, it is difficult to prove that the registration of the disputed trademark is a hijacking because the relevant art of the “Art of Life” sign in the “Art of Life” course submitted by the Life Art Foundation before the application for the trademark application is not shown. The Art of Living Foundation used and had certain degree of popularity on trademarks. Therefore, the courts of the first and second courts found that the registration of the disputed trademark did not constitute the situation of Article 31 of the Trademark Law.

4. Whether the registration of the disputed trademark is in violation of the first paragraph of Article 41 of the Trademark Law.

In this case, the existing evidence cannot prove that the registration of the disputed trademark has taken deceptive measures and other improper means of disrupting the registration order of the trademark, or causing damage to the public, or improperly occupying public resources for improper benefits. Therefore, it is correct for the courts of the first and second instance found that the application for registration of the disputed trademark did not violate the first paragraph of Article 41 of the Trademark Law.

Therefore, the judgment revoked the judgment of the first and second instance, and the trademark review and adjust board should review and reverse the decision.

Brief comments and protection strategy by Right & Able

Article 15 of the Trademark Law is on the issue of cybersquatting by agents and representatives of trademarks which is a relatively prominent issue in trademark cases. Under Trademark Law of 2001, the scope of the agent and representative is limited to the company's shareholder or managing employees who have a contractual relationship, or other contractual parties with contractual relationships. The problem arises is that the relationship which is formed in the contract negotiation is difficult to be protected without sufficient evidence. This case is an example.

Under Trademark Law of 2014, concerning to contractual relationship, the general sales contract relationship was expanded, the presumption of contractual relationship with the representative of the agent was also expanded. The squatting trademark can also be extended to a range of similar trademarks on proximity goods. The relationship of the agent or representative can also be formed at the stage of contract negotiation or the relevant form can be known. The degree of similarity of the trademarks would also become one of the considerations.

In this case, the complete evidence chain has been formed to prove that the third party in the original trial is the agent in the agency relationship of the case which the evidence are based on the facts ascertained, the name of the relevant website, the English name of the company, the name of the contact person, the registrant of the third party company website and the registered address of the third party of the original trial, and the retrial applicant Ms. Hu Mou, a volunteer, visited the third-person business premises of the original trial and other information and facts. People are negotiating to establish an agency relationship.

In addition, the petitioner’s logo is composed of a combination of the words "THE ART OF LIVING" and the "Sun Swan" pattern. Regarding the "Sun Swan" pattern logo, the respondent had registered its application as a trademark, and the retrial applicant filed an objection. In 2013, the Trademark Review and Adjudication Board made the decision [2013] No. 139141 "On the graphic trademark No. 6797427 The objection review ruling that recognizes that the evidence of the Art of Life Foundation can prove that it has prior copyright to the graphic works, and that the graphic works enjoyed by the opposition trademark and the Art of Life Foundation are indistinguishable from the design and overall vision. The respondent must be aware of the trademark of petitioner.

In summary, the Supreme Court confirmed that the above evidence indicates that the contractual negotiation and the prior trademark opposition ruling proved that the respondent had prior knowledge of the applicant's trademark and constituted cybersquatting.

 


Right&Able represented the third party of Guangzhou Yuexiu District Baoying Trade Co., Ltd. succefully against the plaintiff Nanan City, Fujian Province Yu Hao Footwear Co., Ltd., the defendant Trademark Review and Adjudication Board trademark revocation review of administrative disputes
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