Our company, Beijing Fineland IP Firm, was entrusted by Helen Chapman to file a request for invalidation against the trademark No. 45174357 "DOTTY FISH" applied by Wang Mengping on the commodity category 25. After CNIPA's examination, we finally succeeded in safeguarding its rights.

Brief Description of the Case

The comparison graphic of the marks is as below:

1.As the main brand of the applicant, "DOTTY FISH" has been successfully registered in the UK on January 25, 2010, and has already gained certain popularity and influence in mainland China before the registration of the disputed trademark. The disputed trademark is completely similar to the cited mark in the composition of words, and it was designated to use on similar goods with the cited mark, which belongs to "preemptive registration of a trademark that has been used by others and has certain influence by unfair means", which violates the provisions of Article 32 of the Trademark Law and shall be declared invalid.

2.Clearly knowing that the applicant had already used the "DOTTY FISH" trademark which enjoyed certain influence, the respondent registered the highly similar trademark on the similar goods used by the applicant, which showed obvious subjective malice. The coexistence of two trademarks in the market is easy to cause confusion and false recognition, which violates the provisions of Article 15, Paragraph 2 of the Trademark Law. The disputed trademarks shall be declared invalid.

3.In addition to the disputed trademark in this case, the respondent has also applied for registration of other foreign well-known brands. The respondent's behavior of registering others' trademarks without using them excessively occupies the high quality trademark resources of legal operators, and violates the basic social public morals and principles of honesty and credit. Objectively, it damages the registration order of trademarks in China and causes bad effect. Thus, it violates Article 4, Article Article 10.1(8), Article 44.1 of the Trademark Law, and the opposed trademark shall not be approved for registration.

4.In this case, the applicant's brand "DOTTY FISH" has gained high popularity through the applicant's continuous use and publicity; In addition, the disputed trademark is similar to the applicant's cited trademark in constitution, it is difficult to design such a "similar" trademark without deliberate imitation. If the logos of both parties' coexist in the market, it is easy for the relevant public to mistakenly recognize that the disputed trademark may have some specific association with the applicant's series trademarks, thus causing confusion and false recognition of the source of the goods. Therefore, in accordance with the provisions of Article 10, Paragraph 1, Item 7 of the Trademark Law, the disputed trademark shall be declared invalid.

5. The respondent's preemptive registration of trademarks with high reputation is more likely to lead to confusion and false recognition and mislead the public; Its behavior of downplay the confusion caused, improperly cling to others' higher visibility and attracting consumers improperly will bring injustice to other operators with good faith in the market, damage the interests of other competitors in the market with good faith, and destroy the fair and orderly market order. Moreover, it destroys the basic purpose of the Trademark Law to prevent confusion and protect honest and trustworthy labor, which has obvious imlegitimacy. The applicant thought that the respondent submits a forged business license when applying for the registration of the disputed trademark in the name of the responsible person for an individually-owned business, which belongs to "obtaining registration by fraudulent means or other improper means", the disputed trademark shall be declared invalid.

In accordance with the provisions of Article 44(1), Article 44(3) and Article 46 of the Trademark Law of the People's Republic of China, CNIPA has decided as follows:

    The disputed trademark shall be given invalidation declaration.