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In a May 2022 judgment in a trademark infringement dispute, the Beijing Intellectual Property Court held in favor of defendants Shenzhen Chow Tai Fook Online Media Co., Ltd. (Chow Tai Fook) and Beijing Jingdong 360 E-commerce Co., Ltd. (JD). The court decided the appellant, Jun Zheng Ma, had obtained the cited trademark registration in bad faith, and therefore, the enforcement of the registration constituted an abuse of rights. The appellant’s trademark, JIAOREN骄人 (“jiaoren” is the English transliteration of 骄人, which literally means “impressive, proud”), was filed in China on May 6, 2008, and registered on March 28, 2010, in Class 14. Noticing that Chow Tai Fook was selling a series of rings and necklaces on the JD platform under the brand 骄人, the appellant claimed that the defendants Chow Tai Fook and JD infringed his exclusive trademark rights and requested the court order the defendants to stop the infringement immediately and compensate him for damages.

In fact, Chow Tai Fook had launched a series of diamond products in 2006 under the 骄人 brand and acquired goodwill by using and promoting the mark extensively. No evidence existed to prove that the appellant used his registered mark in actual business. Moreover, he also attempted to register marks that were highly similar to marks of other famous brand owners but without reasonable explanation. Such acts are considered as hoarding trademarks.

The appellant’s infringement claim against Chow Tai Fook’s use of the 骄人 mark was denied in a previous binding civil ruling and also confirmed Chow Tai Fook’s prior right to the mark acquired through use. Nevertheless, the appellant filed a separate suit based on the same grounds, although the acts that were the subjects of the suit were carried out via a different channel. The first instance court ruled that Chow Tai Fook’s use of the 骄人 mark was legitimate and rejected all the appellant’s claims. In the appeal, the Beijing Intellectual Property Court further commented that the registration of the JIAOREN骄人 trademark violated the principle of good faith, and initiating a lawsuit based on a defective registration against Chow Tai Fook’s fair trademark use constituted an abuse of rights.

This case clarifies that “claiming trademark infringement based on the trademark rights obtained in bad faith against fair use constitutes abuse of rights.” All parties should follow the good faith principle in civil actions. The purpose of trademark law is to protect proper use and regulate abuse of rights, to keep order in market competition.

Qingyuan Ruan specializes in trademark prosecution, trademark search and watch, legal opinions on trademark litigation and licensing/assignment of trademark at CCPIT Patent & Trademark Law Office.