(2016) Jing Xing Zhong Zi No. 475 (Beijing Higher People’s Court)
Earlier this year, the Beijing Higher People’s Court in China upheld a lower court decision rejecting applications for FACE BOOK for beverages and food items in Classes 29, 30, and 32 based on the applicant’s bad faith and obvious copying of Facebook Inc.’s FACEBOOK trademark.
On January 24, 2011, Liu Hongqun, a Chinese individual, applied to register the mark FACE BOOK for food and beverage items in Classes 29, 30, and 32. Facebook opposed the applications relying in part on its registrations for FACEBOOK in Classes 35 and 38. The Chinese Trademark Office rejected the oppositions, so on April 2, 2013, Facebook appealed to the Trademark Review and Adjudication Board, which upheld the Chinese Trademark Office’s decision. Facebook further appealed to the courts.
The court of first instance, the Beijing First People’s Intermediate Court, ruled in Facebook’s favor. The applicant, Liu Hongqun, refused to accept the decision and appealed to the Beijing Higher People’s Court.
On April 25, 2016, the Beijing Higher People’s Court upheld the lower court’s verdict. It noted that although Facebook’s FACEBOOK registrations in Classes 35 and 38 had obtained a certain reputation, the evidence was insufficient to prove that they had achieved widely-known fame in China. However, the Court still ruled in Facebook’s favor because it found that Liu Hongqun’s FACE BOOK applications were filed in bad faith and should therefore not be registered, pursuant to Article 41 of the China Trademark Law. The applicant’s bad faith was supported by evidence that he had applied for well-known Chinese marks owned by unrelated third parties.
Notably, the court found that the applicant had applied for the FACE BOOK mark and copied Facebook’s mark in bad faith, despite the fact that the FACEBOOK website is blocked in China (indeed, the applicant argued that the FACEBOOK mark could not have achieved a well-known reputation in China since its users could not utilize the site). It is worth noting, however that the site was only blocked in China in 2009 (following its use during riots in July 2009), three years after the Facebook site became available to the public.
While the outcome may be heartening to trademark owners combatting trademark pirates in China, we continue to recommend that brand owners file applications in China as soon as possible given China’s “first-to-file” system of recognizing trademark rights. Although it is possible to overcome first-filed pirate applications by exhibiting applicants’ bad faith and copying of true owners’ marks, not all trademarks are as well-known as FACEBOOK, so courts and administrative bodies may not readily find instances of obvious bad faith in other circumstances.