Unitalen Representing Emperor Group Succeeded in Invalidating Counterfeit Trademark Across Classes by Judicial Recognition of Well-known Trademark

August 10, 2022

Case brief:

Emperor Group has six companies listed on the main board of the Hong Kong Stock Exchange, with business scopes covering finance, real estate, watches and jewelry, entertainment, hotels, media, furniture and interior decoration, etc. So far, it has become a comprehensive enterprise group with diversified businesses.

Recently, regarding the case of administrative dispute of Emperor Group represented by Unitalen suing CNIPA and the third party HK YING HUANG INTERNATIONAL GROUP HOLDINGS LIMITED over the request for invalidation of Trademark No. 12067509 "", after the first instance in the Beijing Intellectual Property Court and the second instance in the Beijing Higher People's Court, the Beijing Higher Court made the (2021) Jing Xing Zhong No. 6500 administrative judgment of the second instance on February 7, 2022, determining as follows: the cited Trademark No. 1160070 "" of the Emperor Group has constituted a well-known trademark on goods in "jewelry; precious stones" prior to January 18, 2013, the third party's application for registration of the disputed trademark violates the provision of Article 13.3 of the Trademark Law (2014), constituting a reproduction and copy of a well-known trademark; and the services such as "pleasure boat transport; marine transport" on which the disputed trademark is approved for use are closely related to the goods in "jewelry; precious stones" on which the well-known trademark is approved for use, and the use of the disputed trademark misleads the public, thereby possibly damaging the interests of the Emperor Group. The second instance court overturned the first instance judgment and finally invalidated the disputed trademark.

Typical significance:

Winning this case is a milestone for the Emperor Group’s subsequent right protection actions, as mainly shown in the following aspects:

Firstly, this is the first judgment for the Emperor Group to obtain judicial recognition of its trademark as a well-known trademark. The time of the cited Trademark No. 1160070 being recognized as a well-known trademark is further advanced to January, 2013, which can be used as an important basis and reference for subsequent right protection actions;

Secondly, according to the statistics of CNIPA, the average percentage for the first instance decisions to overturn the Trade Review and Appraisal Board (TRAB) decisions is only 8.2%, and the average percentage for the second instance decisions to overturn the TRAB decisions is only 13.9%. Under the judicial trend where the first instance judgments are very likely to be upheld by the second instance courts, the first instance judgment was successfully changed in this case, and the cited Trademark No. 1160070 of the Emperor Group was further recognized as a well-known trademark, which fully recognized Emperor Group’s brand management over the years and was of great significance to the subsequent right protection.

Thirdly, regarding the protection of the trademarks of the Emperor Group, CNIPA's previous records on administrative recognition and protection of the well-known trademarks were all directed at the goods in Class 18 and Class 25 which are closely related to goods in Class 14 "jewelry; precious stones". This judgment achieved cross-class protection from goods in Class 14 "jewelry; precious stones" to the services in Class 39 "pleasure boat transport; marine transport" for the first time, and widened the scope of right safeguarding and protection of the cited Trademark No. 1160070 as a well-known trademark.