Trademark opposition case for “恋火 PASSIONAL LOVER”
Applicant: Guangdong Wanmei Biotechnology Co., Ltd.
Focus of the Case: Practical Application of Article 19, Paragraph 4 of the Trademark Law
Our client is the true owner of the "Lian Huo PASSIONAL LOVER" series trademarks. In 2018, the client applied for registration of the "Lian Huo" and "PASSIONAL LOVER" trademarks in classes 5 and 9, which were rejected. The cited trademark was the prior application of "Lian Huo PASSIONAL LOVER" by Tong Huo (Shanghai) Trading Co., Ltd. Because the "Lian Huo PASSIONAL LOVER" trademark has very strong distinctiveness, and the cited trademark is completely identical, it is difficult to consider it a coincidence. Therefore, we further investigated the corporate information of Tong Huo (Shanghai) Trading Co., Ltd., and discovered that after submitting the cited trademark application, the company added "intellectual property agency (excluding patent agency)" to its business scope. Our legal opinion is that even if the company did not violate Article 19, Paragraph 4 of the Trademark Law, which states that "trademark agencies shall not apply for registration of other trademarks except for trademarks for their agency services," at the time of trademark application, it violated this provision during the substantive examination of the trademark. Therefore, its application should be rejected (trademarks that have been initially announced should not be approved for registration). Even if it subsequently deletes this business scope content, it should not be considered that the obstacle to its trademark application registration has been eliminated, otherwise the legislative purpose of this provision will be defeated. At that time, no relevant precedents were found. Therefore, we submitted the aforementioned case details and legal opinion in writing to the Trademark Office Examination Center and Comprehensive Department. About two weeks later, we received a phone call from the Trademark Office examiner. The Trademark Office stated that it agreed with our legal opinion and verbally promised that if the company's application had not been substantively examined, it would be rejected; if it had been substantively examined, the client would need to file an opposition. After that, we filed an opposition against the company's application for these two trademarks, and at the same time, the client's rejected trademark application was filed for reconsideration, and we requested that the Trademark Office postpone the hearing until the cited trademark was not approved for registration before making a preliminary determination of the client's application trademark. Finally, Tong Huo (Shanghai) Trading Co., Ltd.'s application for the "Lian Huo PASSIONAL LOVER" trademark in classes 5 and 9 was ultimately not approved for registration due to violation of Article 19, Paragraph 4 of the Trademark Law. The client's request for postponement of the hearing on the reconsideration case was also supported, and by 2020, the client's application trademarks were also successfully announced for initial examination.
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