Case summary
On February 5, 2015, WenLi (respondent of the case) applied for trademark registration in the EU
（013714316, hereinafter referred to as the "Disputed Trademark"). On May 22, 2015, Inner Mongolia Yili Industrial Group Co., LTD. (the applicant in this case, hereinafter referred to as "Yili Group") filed an objection to trademark registration with the European Union Intellectual Property Office (hereinafter referred to as "EUIPO") on the grounds of "malicious registration", on the grounds that the disputed trademark is the same as the EU registered trademark No. 5793443 previously registered by the applicant
Trademark No. 1) and international Registered Trademark No. 1097761
（Trademark No. 2) There is a possibility of confusion.
However, the EUIPO's Opposition division ruled on 28 October 2016 to reject Yili Group's opposition to the trademark rights. Yili Group refused to accept the decision, and then appealed to the Appeal Committee to revoke the decision made by the opposing department. The EUIPO Fourth Appeal Committee, after hearing, ruled on September 14, 2017 to dismiss Yili Group's appeal, which led to Yili's subsequent trademark invalidation proceedings.
On July 2, 2018, Yili Group filed an application for invalidation of the disputed trademark registered by WenLi with the EU Intellectual Property Office. After examination, the EU Intellectual Property Office issued a ruling on February 14, 2020, in favor of the plaintiff and declaring the disputed trademark invalid.
Due to the relationship of space and the opposition procedure failed, the following mainly introduces the invalidation litigation.
Trademark invalidation action:The legal requirement cited in the invalidation action brought by Yili Group is Article 59 (1) (b) of the EU Trademark Regulation, which provides that "an application to the EU Intellectual Property Office or the invalidation of an EU trademark on the basis of a counterclaim in an infringement action may be made under any of the following circumstances: (b) the applicant filed the trademark application in bad faith."
Around the malicious intention of the respondent WenLi, the applicant Yili Group submitted a large amount of evidence. After summary, its reasons and basis are mainly as follows:
1. Popularity of Yili enterprises and trademarks
Yili Group has provided extensive evidence to demonstrate the goodwill of Yili enterprises in China and throughout Asia, the commercial value of the Yili brand and the popularity of the Yili trademark.
2. The respondent's knowledge of Yili's enterprises and trademarks
Yili Group issued an investigation report on WenLi's personal information, and evidence showed that he was still a Chinese national in 2009. Based on a large amount of evidence, WenLi lived in China as a teenager and was largely aware of Yili Group, a leading dairy company in China, so it can be presumed that he understood the use of the Yili trademark. Telephone records between notaries and WenLi also show that he is fluent in Chinese.
3. The business scope of the group registered by WenLi
Through ebay website, corporate residence and other information query, Yili Group pointed out that WenLi registered group LiCan Int 'l Investment Company Ltd and Lican Int 'l Investment Co.,LTD. WenLi's main business is the retail of imported magnets, pipe components and other low-cost hardware, and it has no operations in the commodity areas named in the disputed trademarks, nor has Wenli operated any milk, dairy products or even beverage and food businesses. There is no commercial logic to the registration of the disputed mark.
The Applicant therefore believes that the disputed trademark registered by WenLi is registered in bad faith, rather than for the business of the commodity category in question.
The respondent WenLi has made a defense against the above application for invalidation, and the main defense reasons are as follows:
WenLi argued that just because he lived in China in his childhood, it cannot be assumed that he is familiar with the business activities of Yili Group, and he has no knowledge of Yili Group, and the evidence submitted by the applicant cannot prove that the applicant enjoys reputation and popularity worldwide, or even popularity in China.
The English letter part of the disputed trademark "YILI" corresponds to the Chinese part of "Yili", while the Chinese "Yi" is the beginning of a new era, and "Li" is the meaning of the smooth prosperity of the business, conveying the respondent's own vision and concept, and has nothing to do with the applicant's trademark.
In response to accusations that it does not yet sell milk or dairy products, WenLi said that although it does not have a dairy business, it operated a restaurant in 2008 and 2009. In addition, the respondent submitted an accounting report for the estimated costs of the self-employed "YILI Yogurt".
In particular, WenLi pointed out that the applicant also did not take measures to protect the Latin letter "YILI" in China, and that the applicant plans to do business in Europe is the "YEALE" logo. Accordingly, WenLi concluded that the applicant had no prior act or intention to protect "YILI" as a trademark, and therefore the respondent could not have registered the trademark in bad faith.
Taking into account the respective claims and evidence of the parties in this case, as well as the interpretation of "bad faith" in Article 59 (1) (b) of the EU Trademark Regulation, the EU Intellectual Property Office considers that:
1. There is sufficient third-party evidence to prove the popularity of the applicant Yili Group in the food industry, and before the date of filing of the disputed trademark, the Latin letter "Yili" and the Chinese character "Yili" as a whole have been recognized as the top 23 commercial brands in China. Whether Yili Group uses the Latin letter "Yili" on all occasions is not the core issue, because the Latin letter "Yili" has been regarded as a whole commercial brand together with the logo, and has been recognized by the professional brand database BrandZ and numerous international media.
2. There is no commercial logic to support the application for registration of the disputed mark throughout the EU for the purpose of starting a home-made yoghurt business in London.
3. The registered goods of the disputed trademark are in the same industry as the applicant, which is the food industry, especially the dairy industry.
4. The respondent used to have Chinese nationality, and its defense of the meaning of the disputed trademark reflects its basic knowledge of Chinese, and its interpretation of the choice of the word "Yili" as a trademark precisely reflects its mastery of the Chinese language.
To sum up, the cancellation department found that the respondent WenLi registered the disputed trademark out of bad faith, ruled in favor of the applicant Yili Group's claims, and the disputed trademark was declared invalid. The defendant's trademark No. 013714316 registered in the EU was revoked and the defendant bears all the costs of the case.
Enlightenment
Through the comparison of the result of the objection procedure and the invalid procedure in this case, the protection of trademark rights in the EU requires a scientific choice of appropriate litigation strategy, and the first thing is a full understanding of EU law.
The reason why Yili Group lost the case in the opposition procedure is that there is a deviation in the understanding of the EU Trademark Regulation, which can be seen from the fact that it did not provide evidence of the popularity of the enterprise trademark in the first trial of the opposition procedure.
In the application for trademark invalidation procedure, Yili Group was obviously more fully prepared and provided comprehensive evidence to the revocation department around the application conditions of Article 59 of the EU Trademark Regulation, laying the foundation for the final victory of the case.
Source: Beijing Intellectual Property Public Service
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