Introduction: For renowned trademarks, the registrant should extend its protection scope to the relevant goods as much as possible to reduce the room for trademark preemptive registration by others. If the mark was preemptively registered on the relevant goods, the registrant should insistently protect its rights and interests through trademark oppositions, invalidations, and subsequent judicial litigations.

Our client EAGLEBURGMANN GERMANY GMBH & CO. KG is the registrant of the mark “EAGLEBURGMANN” in China. The client’s mark enjoys great reputation in mechanical seal products. One company of same industry preemptively registered the client’s mark for “EAGLEBURGMANN” on relevant goods. The client entrusted our firm to file an opposition against the trademark. As the designated goods of the opposed mark and the client’s mark did not constitute similar goods according to Classification of Similar Goods and Services, the CTMO did not support the client’s arguments in the opposition procedure. The client further entrusted our firm to file invalidation against the mark. In the argument of the invalidation, we focused on emphasizing the awareness of the client’s mark, the close relevance of the designated goods of the disputed mark and client’s mark, and the bad faith of the respondent. Finally, the TRAB made the invalidation decision and determined the disputed mark and the client’s cited mark constituted similar marks on similar goods. The TRAB decided that the disputed mark is invalidated. For the holder of renewed trademarks, we think this case may suggest the following:

1.For renowned trademarks, the registrant should extend its protection scope to the relevant goods as much as possible to reduce room for trademark preemptive registration by others;

2. In opposition procedure, the CTMO examines the similarity of the designated goods and services strictly in accordance with the Classification of Similar Goods and Services and seldom breaks through the Classification. However, the TRAB in trademark adjudication procedure and the court in judicial procedure of trademark administrative cases tend to comprehensively consider the relevance of the goods, the reputation of the involved marks, and the bad faith of the applicant of the disputed mark. They are more likely to break through the Classification of Similar Goods and Services in determining the similarity of the goods and services. Therefore, if the renowned mark is preemptively registered on relevant goods or services, the registrant should insist protecting its own rights and interests through filing opposition, invalidation, and subsequent judicial means. If the mark was preemptively registered on the relevant goods, the registrant should insistently protect its rights and interests through trademark oppositions, invalidations, and subsequent administrative litigations.

Information about the client：https://www.eagleburgmann.com/en