JAW-HWA INTERNATIONAL PATENT & TRADEMARK & LAW OFFICES

Sharing of Successful Trademark Opposition against Trademark Registration Filed in Bad Faith: GeneDireX Trademark Oppositions

[ July 2020 ] >Back

Trademark

Sharing of Successful Trademark Opposition against Trademark Registration Filed in Bad Faith: GeneDireX Trademark Oppositions

I.Background of the trademark opposition

In this case, the representative of the opposed party used to be an employee of the opponent. He was in charge of the business promotion in overseas markets and often represented the opponent to participate in overseas exhibitions. After leaving the opponent’s company, the opposed party preempted the opponent’s trademark in Taiwan, China, the United States, and other countries.

The opponent had registered a trademark

, but the designated services thereof failed to fully cover their major business field. The opposed party took this chance and filed the same trademark in the core products of the opponent, so that the opponent needs to cancel the opposed party’s trademark registrations by the trademark oppositions.

We were entrusted with this case in the process of opposition. When dealing with this case, we focused on the evidence of the bad intention of the opposed party and whether the goods/services of the two parties are "similar". In the end, the three registered trademarks preempted by the opposed party were successfully revoked, and the opponent successfully took back the trademark rights of their core products.

II.Articles of the Trademark Act cited in this case

The opponent raised grounds for opposition on the following articles:

Trademark Act Article 30.I.(10): A trademark shall not be registered for being identical with or similar to another person’s registered trademark or earlier filed trademark and to be applied for goods or services identical with or similar to those for which the registered trademark is protected or the earlier filed trademark is designated, and hence there exists a likelihood of confusion on relevant consumers.

Trademark act article 30.I.(12): A trademark shall not be registered for being identical with or similar to another person’s earlier used trademark and to be applied for goods or services identical with or similar to those for which the earlier used trademark is applied, where the applicant with the intent to imitate the earlier used trademark, being aware of the existence of the earlier used trademark due to contractual, regional, or business connections, or any other relationship with the proprietor of the earlier used trademark, files the application for registration.

After two and a half years of examination, the TIPO cancelled the three trademark registrations of the opposed party in violation of the Trademark Act, Articles 30.I.(10). In addition to determining that the trademarks of two parties are the same and that the designated goods/services are "similar", the TIPO also stated that the two parties had business transactions and employment relationships and determined that the opposed party filed the trademarks in bad faith.

III.Trademarks information of the two parties:

The trademarks owns by the two parties are exactly the same:

The designated goods/services of trademark registrations of the two parties:

The opponent	The opposed party
Reg. No. 01571324 Class 42: 1. Research and development (for others) and quality control related to medicine and biotechnology; 2. Engineering research on medicine and biotechnology; 3.Scientific and technological engineering research, chemical analysis, chemical services, bacteriological research, biological research, material testing, computer website hosting related to medicine and biotechnology.	Reg. No.01817977 Class 1: Chemicals for science; Chemical reagents; reagents for chemical use, etc.
	Reg. No. 01818245 Class 5: Serum; Media for bacteriological cultures; Microbiological culture for medical use etc.
	Reg. No.01818493 Class 9: Lens hoods; Color filter; Optical video camera etc.

It shows that the goods/services of both parties belong to medicine and biotechnology, which are extremely professional fields. These items are neither similar nor required to be cross-checked with each other according to the classification list of the goods/services from the TIPO. When dealing with this case, we have to focus on the nature, functions, sales channels, and the relevant consumers to elaborate the similarity of the goods/services.

IV.Evidence of similarity among the designated goods/services:

We provided evidence that the opponent had used the trademark in the identical or similar goods earlier than the opposed party

From the evidence provided by the opponent, we well selected evidence of use of the trademark in the goods identical with or similar to the three trademark registration of the opposed party, such as "dNTP mix (deoxyribonucleotide)", "Protein Ladder (protein standard)", "DNA Marker (deoxyribonucleic acid marker), serum, centrifuge tube, sterile pipette, media for bacteriological cultures”, "BLooK LED transilluminator (LED fluoroscope)” so as to prove that the opponent had used the trademark in the identical or similar goods earlier than the opposed party.

We claimed that the services, "research and development of medicine and biotechnology" is similar to the goods of the three trademark registration filed by the opposed party:

When conducting relevant research and experiments, the researchers and developers who are engaged in medicine and biotechnology must purchase, access, and use scientific chemicals, chemical reagents, reagents for chemical use, serums, and other goods designated in the disputed trademarks. In other words, it is necessary to use the above-mentioned goods to provide the said services. Without the above-mentioned goods, one cannot provide the said services. The consumer groups and those who use the above-mentioned goods or provide the said services are doctors, professors, and laboratory professionals in the laboratories, hospitals, and department of medicine of universities. The goods and services are highly related.

We also found the journal articles and research reports to prove our claims mentioned above.

V.The procedure of proving that the opposed party filed the trademarks in bad faith:

One of the factors that constitutes the violation of Trademark Act, Article 30.I.(12) is "The applicant with the intent to imitate the earlier used trademark". Also, to judge whether there exists a likelihood of confusion, Trademark Act, Article 30.I.(10) indicates that it has to consider “whether the disputed trademark is filed in good faith".

The opposed party kept arguing the disputed trademark was designed by him, and he has used the mark earlier. After searching the relevant information on the internet, we found the opposed party’s Facebook. After reading each post in detail, we found the opposed party representing the opponent to participate in foreign exhibitions therein. The photos contain the opponent’s company name with the disputed trademark, and the date is clearly shown (the screenshot is provided on the next page).

At the beginning of dealing with this opposition, there was very little evidence. Fortunately, the opponent recorded every exhibition that the opposed party participated in detail and uploaded photos every time, on which the most important evidence, the “date" and the "trademark", are clearly shown. We also notarized the important Facebook pages, so it became solid evidence. We also assisted the opponent in selecting the corresponding invoices from the financial documents to prove that the opposed party represented the opponent in overseas exhibitions, such as documents of the opposed party subscribing to travel agency on behalf of the opponent, the invoices of the payment for the opposed party’s flight ticket, and the request form that the opponent had reimbursed for the opposed party’s business expense. In this regard, it was possible to prove that “the opposed party was an employee of the opponent before and represented the opponent’s company to promote the goods of the disputed trademark overseas. The person who uses the disputed trademark first is the opponent, not the opposed party”. Finally, we successfully persuaded the TIPO to accept the evidence of the opponent and in the opposition decision, the examiner decides that "The opposed party was with the intent to cause likelihood of confusion on relevant consumers, and the disputed trademark was filed in bad faith."

VI.Conclusion:

This case was caused because the opponent had registered the trademark in inappropriate designated services that cannot provide complete trademark protection, so that the opposed party had a chance to take advantage of the trademark squatting. In this case, after we took it over in the opposition procedure, we assisted the opponent in finding key evidence, and provided accurate insights of the Trademark Act so that we can successfully win the long-lasting case and take back the trademark rights in Taiwan and China for the opponent.

While we are pleased to share the above successful experience with you, we would like to advise that trademark oppositions are time-consuming, requiring great effort, costly, and full of uncertainties. In many cases, due to the difficulty of collecting evidence and the examiners’ subjective determination, the trademark owners cannot successfully claim their rights through opposition. On the other hand, filing trademark applications are much easier. The factors needed to be considered are whether the proposed mark is distinctive, and whether there is any registered mark or pending application which will bar the proposed mark from registration, etc. With thorough evaluation before filing, in principle, the chance of successful registration is quite high, and it is more cost-effective and time-saving comparing with the opposition procedure. Thus, our advice is that a comprehensive trademark portfolio is the most efficient way for trademark protection and that the house mark of a company should be applied for the goods/services that are currently in use or planned to be used in the future to provide thorough trademark protection and prevent potential risks.

Patent

Taiwan-Japan PPH MOTTAINAI became a permanent program as effective on May 1, 2020 as well as Taiwan-Korea PPH MOTTAINAI became a permanent program as effective on July 1, 2020

To accelerate the examination process and help the applicant obtain the patent right rapidly, Taiwan and Japan launched into the PPH pilot program on May 1, 2012. In 2014, the program was amended into a PPH MOTTAINAI, which was further extended for 3 years in 2017. The said Taiwan-Japan PPH MOTTAINAI pilot program was thus due on April 30, 2020. In the light of excellent cooperation, Taiwan Intellectual Property Office and Japan Patent Office signed a cooperative memorandum on October 30, 2019 to change the pilot program to a permanent program, which was effective on May 1, 2020. Also, Taiwan-Korea PPH MOTTAINAI was launched on July 01, 2015 for five years and was thus due on June 30, 2020. In the light of excellent cooperation, Taiwan Intellectual Property Office and Korean Intellectual Property Office signed a cooperative memorandum to change the pilot program to a permanent program, which was effective on July 1, 2020. The permanent PPH MOTTAINAI between Taiwan and Japan as well as Taiwan and Korea will consistently provide a stable and efficient examination service for the Taiwanese and Japanese as well as Taiwanese and Korean applicants.

Source: https://www.tipo.gov.tw/tw/cp-85-859330-1189b-1.html; https://www.tipo.gov.tw/tw/cp-85-878264-53ea4-1.html

IP FAQs

※ Differences Between “NICE Classification” and “the Practice of TIPO” in Classes 18, 19, 20 and 21

TIPO generally follows NICE classification of the designated goods and services. However, some descriptions of the designated goods and services in NICE classification are not acceptable in Taiwan because some of them are not definite enough under the present practice in Taiwan. We will continuously provide the list of descriptions in NICE classification which are not acceptable along with our suggestions of how to amend these descriptions in accordance with the regulation in Taiwan.

In our previous issues, we have introduced examples in Classes 1~16 NICE classification. Please be informed that all the descriptions of the designated goods in Class 17 of NICE classification are acceptable in Taiwan. Thus, in this issue, we provide the list of some examples in Classes 18, 19, 20 and 21 as below for your reference.

Nice (Indication of Goods)	Our suggestions
Class 18
bags*	This item is too broad to be accepted under the practice in Taiwan. The item should be amended into the standard description(s), such as “purse; backpacks; school bags; waist bag; shoe bag; hand bag; shopping bags; cosmetic bag; travelling bags; lunch box bag; wheeled shopping bags; bags for sports; beach bags; etc”.
Class 19
building materials, not of metal / construction materials, not of metal	This item is too broad to be accepted under the practice in Taiwan. The item should be amended into the standard description(s), such as “Frameworks, not of metal, for building; Framework for building, not of metal; Brackets, not of metal, for building; Wall linings, not of metal, for building; Panels, not of metal, for building; Pillars, not of metal, for building; Slabs, not of metal, for building; Reinforcing materials, not of metal, for building; etc”.
coatings [building materials]	This item is not acceptable under the practice in Taiwan. The item should be amended into the standard description(s), such as “bituminous coatings for roofing; fireproof cement coatings; etc”.
refractory construction materials, not of metal	This item is not acceptable under the practice in Taiwan. The item should be amended into the standard description(s), such as “Refractory brick; fireclay; fireproof cement coatings; grog[fired refractory material]; etc”.
Class 20
bedding, except linen	This item is not acceptable in class 20 under the practice in Taiwan. It should be specified to concrete items which may belong to different classification depending on its nature, such as Sheets [textile] and Bedquilt in class 24, Pillows and Bolsters in class 20.
trays, not of metal*	This item is too broad to be accepted under the practice in Taiwan. We suggest the client designate the standard items “wooden containers; packaging containers of plastic; containers, not of metal [storage, transport]”. Otherwise, the client may designate the standard items “tea tray; tray; baking tray; coffee cup tray” in class 21.
Class 21
basins [receptacles]	This item is too broad to be accepted under the practice in Taiwan. The item should be amended into the standard description(s), such as “flower pots; facial tub; bath tub; washtubs; etc”.
baskets for household purposes	This item is too broad to be accepted under the practice in Taiwan. The item should be amended into the standard description(s), such as “basket; bowl basket; deep-fried oil strainer; bread baskets, domestic; picnic basket; laundry baskets for household purposes; etc”.
bottles	This item is too broad to be accepted under the practice in Taiwan. The item should be amended into the standard description(s), such as “cruets; wine bottle; oil cruets; pitchers; salt cellars; vases; glass flasks[containers]; glass jars[carboys]; carboys; glass vials[receptacles]; ceramic vase; tile vase; Insulating bottle; thermos; etc”.
bowls [basins]／basins [bowls]	This item is too broad to be accepted under the practice in Taiwan. The item should be amended into the standard description(s), such as “bowl; salad bowls; disposable chopsticks; paper bowl; glass bowls; soup bowls; sugar bowls; etc”.
material for brush-making	This item is too broad to be accepted under the practice in Taiwan. The item should be amended into the standard description(s), such as “Pig bristles; Hair for brushes; Horsehair for brush-making”.
brushes*	This item is too broad to be accepted under the practice in Taiwan. The item should be amended into the standard description(s), such as “body brush; non-body brush; brushes for non-human body; makeup brush; animal brush; etc”.
buckets made of woven fabrics	This description is indefinite and not acceptable under the practice in Taiwan.
ceramics for household purposes	This item is too broad to be accepted under the practice in Taiwan. We suggest the client designate the standard items “ceramic vat; ceramic pot; ceramic jar; ceramic bottle; ceramic vase; ceramic container; cosmetics containers of porcelain”.
cleaning instruments, hand-operated	This item is too broad to be accepted under the practice in Taiwan. We suggest the client designate the standard items “steel wool for cleaning; glass brush; bucket brush; cloths for cleaning; squeegees[cleaning instruments]; wood pulp sponge for cleaning; cleaning sponge”.
containers for household or kitchen use	This item is too broad to be accepted under the practice in Taiwan. We suggest the client designate the standard items “cup; bowl; dish; plate; pots; frying pans; steamer; basket; lunch boxes; ice cube box; griddles; etc”.
cooking utensils, non-electric	This item is too broad to be accepted under the practice in Taiwan. We suggest the client designate the standard items “food steamers, non-electric; bottle openers, non-electric; kettles, non-electric; autoclaves[pressure cookers], non-electric; kitchen mixers, non-electric; etc”.
crystal [glassware]	This item is not acceptable under the practice in Taiwan. The item should be amended into the standard description(s), such as “crystal vase; crystal decoration; crystal ornaments; crystal glass; etc”
earthenware／crockery	This item is too broad to be accepted under the practice in Taiwan. We suggest the client designate the standard items “earthenware vase; pottery flower pot; earthenware ornaments; statues of ceramic; works of art of ceramic; earthenware bulletin board; etc”.
flasks*	This item is not acceptable under the practice in Taiwan. The item should be amended into the standard description(s), such as “insulating flasks; class flasks[containers]; drinking flasks for travellers; etc”
glass stoppers	This item is not acceptable under the practice in Taiwan. The item should be amended into the standard description “glass bottle stopper”.
heat-insulated containers	This item is too broad to be accepted under the practice in Taiwan. We suggest the client designate the standard items “heat insulated containers for beverages; insulating flasks”.
indoor terrariums [plant cultivation]	This item is not acceptable under the practice in Taiwan. The item should be amended into the standard descriptions “glass vase; indoor terrariums[vivariums]”.
kitchen containers	That this item is not acceptable in class 21 under the practice in Taiwan. It should be further specified into concrete ones, such as “cup; bowl; dish; plate; pots; etc”.
kitchen utensils	That this item is not acceptable in class 21 under the practice in Taiwan. It should be further specified into concrete ones, such as “turning shovel; ladle; food tong; rolling pins, domestic; etc”.
majolica	This item is not acceptable in class 21 under the practice in Taiwan. It should be amended to concrete items, such as “statues of ceramic” or “ceramic box”, etc.
polishing materials for making shiny, except preparations, paper and stone	This item is not acceptable in class 21 under the practice in Taiwan. It should be further specified into concrete ones, such as “polishing cloths; polishing leather; polishing gloves; Polishing apparatus and machines, for household purposes, non-electric; Wax-polishing appliances, non-electric, for shoes; etc”.
porcelain ware	This item is too broad to be accepted under the practice in Taiwan. We suggest the client designate the standard items “porcelain vase; porcelain flower pot; porcelain ornaments; statues of porcelain; works of art of porcelain; etc”.
pottery	This item is too broad to be accepted under the practice in Taiwan. We suggest the client designate the standard item “pottery flower pot”.
scrubbing brushes	This item is too broad to be accepted under the practice in Taiwan. The item should be amended into the standard description(s), such as “body brush; non-body brush; brushes for non-human body; makeup brush; animal brush; etc”.
sieves [household utensils]	This item is not acceptable under the practice in Taiwan. The item should be amended into the standard description “Sieves for kitchen use”.
tie presses	This item is indefinite and not acceptable in class 21 under the practice in Taiwan. Catalogues should be submitted to help the examiner’s understanding and determine the classification.
toilet utensils	This item is not acceptable in class 21 under the practice in Taiwan. It should be further specified into concrete ones, such as “toothbrushes; facial brush; shower brush; soap boxes; rinsing mug; etc”.
utensils for household purposes	This item is not acceptable in class 21 under the practice in Taiwan. It should be further specified into concrete ones, such as “pitcher; Tableware, other than knives, forks and spoons; droppers for household purposes; trays for domestic purposes; etc”.

JAW-HWA INTERNATIONAL PATENT & TRADEMARK & LAW OFFICES

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