Sanyou Client: PERKINELMER, INC.

Sanyou Attorney: Lu Yimeng

Trial Organ: China National Intellectual Property Administration

Trial Result: Registration of the opposed trademark was disapproved

Case Facts

The Opposed Party applied for “珀金埃尔默” trademark No. 42909798 (the opposed trademark) on Category 21, and the notice of first instance was made on May 27, 2020.

PERKINELMER, INC. (the Opponent) filed a petition for opposition on the grounds that “珀金埃尔默” is the trade name and principal trademark of the Opponent, the opposed trademark is identical to the Opponent’s “珀金埃尔默” trademark and trade name with certain popularity, the Opposed Party has registered “珀金埃尔默” on several categories in bad faith and registered a large number of public resources, disturbing the order of trademark registration, and the Opposed Party applied for the opposed trademark in bad faith, violating the principle of good faith and likely to produce bad effects.

After trial, China National Intellectual Property Administration pointed out that although the opposed trademark and the reference mark were used on non-similar goods and services, after being used for a long time and widely publicized by the Opponent, the reference mark has certain popularity and influence in related industries and is highly original. The text composition, pronunciation and overall appearance of the opposed trademark are identical with those of the Opponent’s reference mark. The Opposed Party’s application for registration of the opposed trademark shows an obvious intention of copying or plagiarizing others’ trademark, which violates the principle of good faith, and will not only cause the consumers concerned to misidentify the source of the goods, but also damage the market order of fair competition.

According to Article 7, Article 30 and Article 35 of the Trademark Law, the opposed trademark shall not be registered.

Focus Of Disputes

1. Do the opposed trademark and the Opponent’s reference mark constitute similar trademarks on similar goods?

Although the Opponent did not apply for the registration of “珀金埃尔默” or similar trademark on Category 21, the Opponent held the “珀金埃尔默” trademark on Categories 1, 5, 9, 10, 41 and 42, etc. Although the provisions of the “Similar Goods and Services Table” show that it is not similar to the opposed trademark, the Opponent displays a variety of core products and services it has developed over the years on its official website, involving all aspects of daily life.

As the principal trademark of the Opponent, “珀金埃尔默” has been widely used and has gained high popularity while the Opponent advertises and promotes the products and services. Since the opposed trademark is identical to the Opponent’s “珀金埃尔默” trademark, its registration and use will inevitably lead to confusion and misidentification of the source of the goods by the relevant public.

2. Does the Opponent’s reference mark have a certain influence in China after being used?

“PerkinElmer, Inc.”, the Opponent in this case, is the world’s premier provider of instruments, technologies and services in the field of analytical chemistry, providing test instruments, diagnostic tools and medical and industrial imaging equipment for environmental, food and consumer products, with a primary focus on ensuring human health and environmental safety. In particular, it is a global leader in neonatal screening systems and prenatal screening in the first trimester. The Opponent was founded in 1937 and has a history of nearly 100 years.

In the medical field, PerkinElmer was one of the earliest companies to launch prenatal and neonatal screening services in China. To date, PerkinElmer has provided screening services for more than 100 million newborns and helped nearly 100,000 newborns with birth defects start a new life. In life sciences and pharmaceuticals, PerkinElmer’s innovative scientific instruments, reagents, high-throughput platforms, and software and services help scientists better understand diseases and develop treatments through accurate and intuitive biological imaging.

In addition to hardware research and development, PerkinElmer has a special Informatics that develops related data platforms. At present, relevant hospital data systems have been developed, from pharmaceutical research and development to patient diagnosis and medication data, for tracking, mining, analysis and application.

The Opponent provided a large number of evidence of the use of the “珀金埃尔默” trademark in China, trying to prove that the Opponent’s reference mark has a certain influence in China after being used.

3. Does the opposed trademark infringe the trade name right of the Opponent?

Prior to the date of application for the opposed trademark (December 9, 2019), the Opponent had registered “珀金埃尔默” as its Chinese trade name in China and had used it widely for a long time.

“PerkinElmer Healthcare Diagnostics (Shanghai) Co., Ltd.”, the Chinese affiliate of the Opponent, was registered in China on March 29, 2000. Subsequently, the Opponent set up a series of holding companies in China, all of which use the trade name “PerkinElmer” to facilitate consumer identification and memory, such as Chengdu PerkinElmer Medical Laboratory Co., Ltd., PerkinElmer Enterprise Management (Shanghai) Co., Ltd., PerkinElmer Instrument (Suzhou) Co., Ltd., PerkinElmer (Shanghai) Equity Investment Fund Management Co., Ltd., etc.

4. Does the Opposed Party act in bad faith?

The Opposed Party is “Qingdao Santi IOT Technology Co., Ltd.”, whose main business is “research and development of communication technology, technology research and development in the field of IOT technology and network technology”. After inquiry on the official website of the Trademark Office, it is learned that a total of 42 trademark registration applications have been submitted by the Opposed Party, involving 15 categories such as Category 10 medical devices, Category 3 cosmetics, Category 7 generator sets, etc., which have nothing to do with its IOT and communication technology, and are obviously beyond its business qualifications.

In addition, prior to the date of application for the opposed trademark (December 9, 2019), the Opponent had been to Qingdao for several times to attend industry seminars and exhibitions, etc. The exhibition addresses are very close to the business registration address of the Opposed Party, so it is very likely that the Opposed Party knew the Opponent’s trade name and trademark “珀金埃尔默” through exhibitions, and then registered it.

Typical Significance

In this case, China National Intellectual Property Administration made the decision of the opposition in accordance with Article 7 and Article 30 of the Trademark Law. Among them, Article 7 involves the principle of good faith, that is, “the application for registration and use of trademarks shall follow the principle of good faith”, which has the nature of general provisions and generally will not be applied by the examiner in the decision of opposition case.

However, the decision of the opposition in this case was made in 2021, at which time the Guidelines for Trademark Examination and Adjudication was not yet applied. Therefore, the application of Article 4 of the Trademark Law, “Trademark registration application in bad faith not for use shall be rejected”, which is most consistent with this case, was not clear when the decision of the opposition was issued. However, we can also know from this case the more efforts of China National Intellectual Property Administration to crack down on trademark application in bad faith.

Since 2022, the Guidelines for Trademark Examination and Adjudication has clearly defined the application of Article 4 of the Trademark Law. In this case, the two applicable situations “a large number of applications for registration of trademarks or marks the same as or similar to those of others with certain popularity or strong significance on non-similar goods or services” and “repeated application for registration of specific trademarks of the same subject with certain popularity or strong significance” happened

The author believes that in 2021, when the Guidelines for Trademark Examination and Adjudication was not implemented, if the examiner thought that the trademark was registered in bad faith, it was likely to use the general provisions of the Trademark Law (such as Article 7) to protect the actual right holder of the trademark.

In addition, in view of the current efforts of China National Intellectual Property Administration to crack down on trademark application in bad faith, we should try our best to find new entry points from the perspective of bad faith when dealing with daily cases, so as to increase the chances of success as much as possible.