In a fight over No. 9924701 trademark "sheer love 十分爱", the U.S.-based Victoria's Secret Brand Management Company engaged in a four-year scuffle with Zhejiang Yiwu Qingpeng Cosmetics Company. Beijing High People's Court made the final call on this dispute recently, denying Qingpeng's appeal and holding its act qualified for acquiring registration by other improper means under the Chinese Trademark Law.
Victoria's Secret and its affiliated companies acquired registration of the trademark "SHEER LOVE" in the U.S., Canada and EU, certified to be used on perfumes and bathing gels. Qingpeng is in the business of manufacture and distribution of cosmetics and applied for registration of the trademark in dispute in 2011 and obtained approval in 2012, certified to be used on Class 3 goods, bathing gels and perfumes.
Qingpeng and its affiliated companies applied for registration of over 800 trademarks, including La pargay and Justin Bieber, trademarks identical or similar with famous brands or people. Qingpeng also posted nearly 30 trademarks for sale on a trademark transaction platform.
In 2014, Victoria's Secret pled to the Trademark Review and Adjudication Board (TRAB) to invalidate the trademark in dispute, arguing that it belongs to symbols jeopardizing socialist morality or causing other ill effects; Victoria's Secret's trademark that has been in use and had certain reputation; Qingpeng acquired the registration by fraud or other improper means. In July 2015, TRAB upheld the registration of the trademark in dispute. Victoria's Secret then instituted the proceedings at Beijing IP Court.
After hearing, Beijing IP Court held that Qingpeng's act prejudiced the legitimate right of Victoria's Secret, shocked order of trademark registration administration, and prejudiced the interests of an uncertain number of trademark applicants and social/public interests, making it qualify for acquiring registration by other improper means under the Chinese Trademark Law. Qingpeng's evidences are not sufficient to prove its trademark has gained relatively high reputation or established a stable market position through commercial use. Qingpeng evidently took a "free ride" and improperly took advantage of other's market reputation. Such "fruit of a poisonous tree" lacks of a legitimate basis for legal protection.
In 2016, Beijing IP Court revoked the TRAB decision, ordering it to make a de novo one. Qingpeng then appealed to Beijing High People's Court who would also believe its act prejudiced Victoria's Secret's legitimate civil interest. Qingpeng's act of "freeriding" others' reputation and credit was clearly for gaining improper interests, which triggered a large number of trademark disagreements, disputes and even administrative litigations, consumed administrative and judicial resources and prejudiced social/public interests. In addition, Qingpeng's acts of hoarding trademarks and registering trademarks for selling them corrupted trademark registration order and prejudiced the interests of an uncertain number of trademark applicants.
In this connection, Beijing High sided with the IP Court on acquiring registration by other improper means, denying Qingpeng's appeal and upholding the first-instance decision. (by Wang Guohao)
（Editor Gao Sihan）
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