Case Introduction

The trademark Reg. No. 12887939 “嘉伦光彩JIALUNGUANGCAI & DEVICE” was applied for registration by Jiangsu Jialunguangcai Pharmacy Co.,Ltd. (hereinafter referred to as “Jiangsu Jialun Company”) on July 9, 2013 and approved for use in services “Pharmaceutical retail or wholesale services” on May 7, 2016. On December 24, 2018, Zhuhai Jialun Pharmaceutical Group Guangcai Pharmacy Chain Co.,Ltd.(hereinafter referred to as “Zhuhai Jialun Company”) filed a request for invalidation of the trademark in accordance with the provisions of Article 15 (1), Article 30, Article 32 and Article 44 (1) of the Trademark Law of 2013.

On December 10, 2019, the CNIPA made a judgment that the registration of the disputed trademark violated the provisions of Article 15 (1) of the Trademark Law of 2013, and the disputed trademark was declared invalid accordingly. Jiangsu Jialun company filed a lawsuit to the court of first instance to cancel the judgment.

The Beijing Intellectual Property Court also held in the first instance that the application for registration of the disputed trademark violated the provisions of Article 15 (1) of the Trademark Law of 2013, and accordingly ruled to reject the claim of Jiangsu Jialun company. Jiangsu Jialun company appealed against the judgment of first instance.

In the second instance, the Beijing Higher People's court held that it is insufficient to found that the registration of the trademark in dispute violates the provisions of Article 15 (1) of the Trademark Law of 2013 according to the evidence submitted by Jiangsu Jialun company in the second instance. However, according to the relevant provisions of the law and judicial interpretation, it can review and judge whether the disputed trademark violates the relevant provisions of Article 32 of the Trademark Law of 2013. On this basis, the court of second instance held that the registration of the disputed trademark has constituted the situation referred to in Article 32 of the Trademark Law of 2013, "unfair means be used to preemptively register the trademark of some reputation another person has used", and should be declared invalid. Accordingly, the court of second instance rejected the appeal and upheld the original judgment.

Case Analyses
This case is a typical case of the application of the principle of comprehensive review. Although the relevant laws of China have made clear provisions on "comprehensive review", there are few cases that apply the principle of comprehensive review in judicial practice. In this case, the court of second instance made a full and detailed discussion on how to apply the principle of comprehensive review, and comprehensively considered the evidence in the case, the popularity of the prior trademark, the subjective malice of the registrant of the disputed trademark and other circumstances of the whole case. Finally, the disputed trademark was declared invalid under the circumstance of changing the original applicable law.