Claim 10 million. Why did the two "TATA" go to court?
One side is Suzhou enterprise focusing on home decoration hardware and bathroom industry and the business entity of "TATA smart home" Suzhou Baolong smart home Co., Ltd. (hereinafter referred to as "Suzhou Baolong"), the other side is the main business body of China's top ten wooden door brands "TATA wooden door", Beijing Yizhong Tongchuang Industry and Trade Co., Ltd. (hereinafter referred to as "Beijing Yizhong Tongchuang"), after the two enterprises coexist in the market for more than ten years, why do they have disputes?
A few days ago, intellectual property learned that Suzhou boshilong and its distributors had recently filed trademark infringement and unfair competition lawsuits against Beijing Xiaoxiao Tongchuang and its distributors and manufacturers.
Suzhou boshilong believes that the use of the words "TATA" in the packaging and promotion of products such as entry door, security doors, and aluminium alloy sliding door by beijing boshilong tongchuang and its distributors and manufacturers violates the exclusive right of suzhou boshilong to "TATA" registered trademark, the People's Court of Dongcheng district of Beijing is requested to order Beijing Yuyi Tongchuang and its distributors to stop infringement, eliminate the impact, and compensate for economic losses and reasonable expenses totaling 10 million yuan.
A dispute over trademark rights related to "TATA" slowly emerged.
Who applies for registration first?
According to the official website of "TATA smart home" in Suzhou and the public enterprise credit information, Dr. Long in Suzhou was established on March 13, 2003, and used to be named Suzhou oubaite sanitary ware Co., Ltd. and Suzhou Baolong sanitary ware Co., Ltd, it is a comprehensive industry and trade company in decoration industry. It is a building decoration material enterprise integrating research and development, production, marketing and service. It mainly specializes in the metal door, metal sanitary ware, bathroom supplies, security products, water heater and other products and related services.
Since its establishment, Suzhou boshilong began to sell the metal door, initially selling outdoor the metal door such as handmade iron gate, and then gradually began to do Metal Auto Door, clean room door and household metal security doors for factories and mining enterprises.
Less than a week after the establishment of Suzhou boshilong, on March 19, 2003, the founder of Beijing Yizhong Tongchuang registered and established Beijing Yizhong Weiye doors and windows Co., Ltd. (the predecessor of Beijing Yizhong Tongchuang, hereinafter referred to as "Yizhong Weiye"). Since then, on June 16, 2011, Duan Weiye was canceled. On August 24, 2011, Beijing Duan Tongchuang, the main operating body of "TATA wooden door", was registered and established. According to the official website of TATA wooden door, TATA wooden door is dedicated to research and development, production, sales and service bedroom door.
Although the brand name is the same, the business scope of the two companies is different. To sum up, Suzhou Boshi long in the South involves hardware and bathroom products including the metal door. However, the north-side Weiye company focuses on the wooden door industry.
Shortly after the establishment of the two enterprises, they began to protect the brand application for registered trademarks.
On May 19, 2003, Suzhou boshilong applied for registration of the earliest "TATA" trademark-No. 3559269 "TATA" trademark, which was approved for use in metal water pipe valves; Metal pipes; The metal door; in the category of hardware goods and services such as metal ring, the term of exclusive right is from December 07,2004 to December 06,2014. Since then, due to the approval and registration of trademark No. 7691580 applied for on September 11, 2009, Suzhou boshilong believes that the two trademarks have been used together for 6 years, and the marks of the two trademarks are the same as the categories of goods, goodwill has been fully extended, therefore, the trademark has not been renewed when it expires.
(Photo source: China wooden door net, invasion and deletion)
▲Some trademark registration applications submitted by Suzhou boshilong so far (source: China trademark Network)
(Photo source: China wooden door net, invasion and deletion)
▲ the earliest "TATA" trademark applied by Suzhou boshilong (source: China trademark Network)
later, Suzhou boshilong also applied for "TATA" related trademarks on hardware, electric door Bel, the metal door, solar water heater, faucet and other products and services around its own business scope, covering the 6th, 7th, 9, 11, 19 and other categories of goods and services.
On the other side, Weiye company also applied to register figurative mark of the informal font No. 3647006 on July 25, 2003. It was approved and registered in July, 2006, and used in processed wood, non-metallic doors, non-metallic windows and other category 19 products. The application for registration of this trademark is 66 days later than the earliest "TATA" trademark in Suzhou boshilong.
(Photo source: China wooden door net, invasion and deletion)
▲The Trademark No. 3647006 first applied for by Beijing Yizhong Tongchuang (source: China trademark Network)
since then, the two enterprises have continued to grow.
Suzhou boshilong still carefully manages the field of hardware and sanitary ware, but the market audience is mainly distributed in Jiangsu and surrounding areas, and many distributors have also developed in recent years.
With its rapid market attention in advertising and sponsoring sports competitions, Beijing Jianchuang has become a large enterprise with factories and stores all over the country. After 2017, it began to expand to metal entry door, in the fields of aluminum alloy sliding doors, smart lock and aluminum-wood doors and windows, some door products produced and sold are not simply wooden structures, but mixed structures containing both wood and metal or other materials.
With the continuous development of the enterprise, the two companies have "overlapping" in business and products, and the trademark dispute between the two "TATA" has begun.
Court of Justice
after initially applying for the "TATA" trademark used on Category 6 products on May 19, 2003 and being approved for registration, Suzhou boshilong still worked on hardware appliances, electric door Bel, the metal door, solar water heaters, faucet and other categories of goods and services have applied for "TATA" related trademarks, covering Category 6, 7, 9, 11, 19 and other categories of goods and services.
In the latest Nice Classification of Goods and Services for trademark registration, "wooden door" belongs to Category 19 goods, while "the metal door" and related metal parts mostly belong to Category 6 goods, the registration of "TATA" related trademarks on the two types of goods has also become the focus of disputes between the two enterprises. In addition, the TATA-related trademarks in categories such as "electric door Bel" products in Category 9 and "part bathroom accessories" in Category 11 also face the challenge of Tongchuang in Beijing.
In April, 2016, Beijing Yuyi Tongchuang increased the business scope of "security door" in the business field of enterprise registration information.
In June, 2016, the TATA wooden door trademark application created in the 6th category by Beijing Yuyi was rejected in September, 2017.
In October, 2017, Beijing Yuyi Tongchuang filed a Announcement of invalidation application for category 6 Trademark "TATA" no. 7691580 under the name of Suzhou boshilong, the reason is that the trademark and the Trademark No. 3647006 created by Beijing Yuyi constitute an approximate trademark used on similar goods. The move made by Beijing Yuyi Tongchuang put the trademark dispute between the two sides on the table.
It is worth noting that the "TATA" trademark applied for by Suzhou boshilong in September 2009 was used on the metal door, hardware and other commodities, excluding wooden doors.
(Photo source: China wooden door net, invasion and deletion)
▲ Suzhou boshilong No. 7691580 "TATA" Category 6 trademark (source: China trademark Network)
(Photo source: China wooden door net, invasion and deletion)
▲Cited trademark: Beijing Tongchuang No. 3647006 trademark (source: China trademark Network)
the former trademark review and adjudication committee of the state administration for industry and commerce made a ruling in september 2018, supporting the proposition of tongchuang, beijing, and announcement of invalidation the metal pipes and water pipes in the trademark "TATA" no. 7691580. Suzhou boshilong then filed an administrative lawsuit against this ruling.
In October, 2019, the Beijing Intellectual Property Court made the first-instance judgment, revoking the requested ruling of the accused announcement of invalidation, and the State Intellectual Property Office made a new ruling on the trademark "TATA" no. 7691580.
The court held that the categories of goods approved and used by the two trademarks are obviously different and do not constitute similar goods; The trademark in dispute consists of the letter "TATA" of the standard font, and the text composition of the cited trademark is not a standard font, it is difficult to recognize it as "TATA" when the relevant public pays general attention ". At the same time, the evidence on the case is not enough to prove that the juxtaposition of the two will cause confusion.
In addition, the court said that the evidence on the court could prove the actual use behavior after trademark registration, and the plaintiff owned the trademark No. 3559269 "TATA" earlier than the trademark application cited. As for the problem that the defendant ruled that the plaintiff had recently registered the "" trademark and thus was malicious, the court held that it could not be a sufficient basis for the trademark dispute in this case to violate article 28 of the trademark law of 2001.
Although Beijing Yuyi Tongchuang filed an appeal later, the court of second instance still upheld the original judgment. The State Intellectual Property Office made a new ruling in accordance with the effective judgment and maintained the "TATA" Trademark No. 7691580.
On the one hand, beijing yuyi tongchuang filed an administrative lawsuit again against the new ruling made by the state intellectual property office, but it was rejected again by the court of first instance and is currently in the second instance.
On the other hand, founded in May, 2019, the registration of the trademark "TATA" no. 7691580 constitutes a malicious copy of the well-known trademark created by Beijing's trademark and has subjective malice, A new round of announcement of invalidation application was submitted to the State Intellectual Property Office, but the State Intellectual Property Office did not support it. At present, Beijing Yuyi Tongchuang has filed an administrative lawsuit against the new ruling.
"Offensive" intensified
it is understood that after repeatedly launching the "strong attack" against the trademark "TATA" no. 7691580, beijing Yuyi Tongchuang began to continuously apply for announcement of invalidation, withdrawal and objection to the "TATA" trademark under the name of Suzhou boshilong.
According to incomplete statistics, at present, Beijing Jianchong Tongchuang has submitted 4 applications for announcement of invalidation, 5 applications for withdrawal of three times to the State Intellectual Property Office for 22 trademarks containing "TATA" in Suzhou, 42 objection applications. In the year of 2019 alone, there were as many as 38 times.
For example, the registered trademark "TATA" no. 11864197 used in Category 9 "electric bell button, electric door Bel, anti-theft alarm and siren" under the name of Suzhou Dr. long, and the registered trademark "TATA" used in category 7 "electric machines for kitchens, the registered trademark" TATA "no. 26932314 on the food-making motor machine, grinding machine, and plough products was also applied for by Tongchuang, Beijing, announcement of invalidation respectively.
However, the current results of the two trademark announcement of invalidation application procedures are not optimistic for Beijing Yuyi Tongchuang. In the two cases, the State Intellectual Property Office and the court did not support the claim that Beijing jiongtongchuang constituted an approximate trademark, maliciously copied well-known trademark, or maliciously registered, and the trademark was still valid.
In addition, while filing the application for announcement of invalidation, withdrawal III and objection, Beijing Yuyi Tongchuang also appealed the "grudge" of both parties to the trademark infringement civil lawsuit. It is understood that in September, 2019, Beijing Luan Tongchuang filed four trademark infringement lawsuits against Suzhou Baolong in Suzhou Intermediate People's Court of Jiangsu province. At present, this series of cases are still under trial.
Up to now, many of the announcement of invalidation, withdrawal 3, and objection applications filed by Beijing Jianchong Tongchuang against the trademark related to Suzhou boshilong "TATA" have ended in failure, at present, there is no news that many administrative disputes are good for Beijing's Tongchuang. In many cases, the trademark under the name of Suzhou Dr. long has not been identified as malicious registration. The reason is that the relevant trademark application of Suzhou Dr. Long is prior and the use is prior, however, it is also difficult to prove that the registered trademark of Suzhou boshilong is malicious. In this regard, intellectual property contacted the relevant attorney of Beijing Yuyi Tongchuang, and the relevant attorney did not reply.
The battle of "TATA" between Beijing Yizhong Tongchuang and Suzhou boshilong may not be an example.
It is understood that there are similar cases in real estate, fast-moving consumer goods, household appliances and other industries. After the scale of some enterprises expands and their businesses are diversified, their brands may enter the business scope of other enterprises and compete with other enterprises. Therefore, a large number of trademark disputes will arise.
In this regard, the solemn lawyer of beijing gaowen law firm said that several principles for solving the conflict of intellectual property rights in china include the principle of honesty and credit, the principle of protecting prior rights, the principle of balancing interests, etc. Such cases mainly involve the principle of protecting prior rights and the principle of good faith.
If one enterprise registers its trademark first and operates in good faith, and does not maliciously attach a large-scale enterprise brand, it can still continue to operate in the field of original products and services. Under the premise of good faith, if the enterprise uses the trademark first but does not register the trademark, it can continue to operate within the original scope but cannot expand the scale of operation. However, it is difficult for larger enterprise brands to take measures against smaller enterprises from the legal level.
If a party enterprise has malicious registration, the right holder can exhaust legal means to safeguard rights. In actual cases, individual enterprises register the same or similar trademarks of well-known enterprises, which makes the well-known trademarks of this well-known enterprise significantly dilute, affects the market reputation of the enterprise, and causes Consumers' Association, moreover, some enterprises have registered trademarks for more than five years, which makes it extremely difficult for rights holders to safeguard their rights.
Later, how long will the series of disputes between "TATA smart home" and "TATA wooden door" around "TATA" related trademarks last? Knowing productivity will keep an eye on it.
(Article Source: China wooden door net, invasion and deletion)
[Extended reading]]
official Xuan | TATA wooden door may most beautiful effect drawing design competition excellent works sharing!
Teach you how to make your home more comfortable and beautiful!
How to choose the brand of doors and windows? Look at the evaluation of door and window brand joining
which brand is better to join doors and windows? Reliable brands are all here
-
TATA wooden door
view details of joining> tag: TATA wooden door joining
number of stores: 1000-3000 basic investment: 100000-300000
joining budget
Request information
