Granting a major victory and relief at the same time to our client, the Indian tools manufacturing company, TAPARIA TOOLS LIMITED, the China Trademark Review and Adjudication Board (TRAB) in a recent decision reversed the China Trademark Office’s decision in an opposition case filed by TAPARIA against a local Chinese Company QINGDAO XINLIAN TOOLS CO. LTD. The brand involved is the renowned Indian brand TAPARIA & Cross device that has its origin to the 1960’s.
The trouble started in December 2010 when Taparia decided to register its brand in China. In the process, it came to know that a Chinese company had applied for an identical ‘TAPARIA & Cross device’ in China. The Indian company opposed this application and also simultaneously filed its own application. TAPARIA has huge stakes in China due to its manufacturing arrangements there.
An investigation into the activities of the Chinese company revealed that ‘TAPARIA’ was just one of the many brands usurped by it. The Chinese company had successfully obtained registrations in respect of a number of reputed international brands such as MASTERCRAFT, MORSE, RAPIDGRIP, LOCKJAW, BENCHMARK, BOOJAR and many others in China, taking full advantage of the ‘First-to-file’ registration policy.
Although Taparia filed considerable evidence material in support of the Opposition Case, the China Trademark Office ruled that the evidence was insufficient to prove TAPARIA’s prior use and reputation in mainland China.
Aggrieved by the Opposition decision, a Review was then filed before the China Trademark Review and Adjudication Board (TRAB) arguing that the mark applied by the Chinese company was identical to the trademark and tradename of the Indian Company. It also violated the Indian Company’s copyright in the artistic logo. Furthermore, the conduct of the local company in registering a series of major international brands in its name buttressed Taparia’s allegation that the local company was dishonest. Taparia also filed further evidence material to establish its reputation of the brand including documents showing participation in various international fairs and exhibitions and in particular, the famous ‘Canton Fair’ in China, declarations and supporting documents from Taparia’s various manufacturing establishments in China, and indirect exports to China through Taparia’s Hong Kong buyer.
The TRAB after reviewing the material on record has now reversed the Trademark Office’s decision and allowed Taparia’s Opposition. The trademark application filed by the local company stands refused. This averted a potentially high risk that our client would have faced in its China operations had the TRAB decided otherwise. By successfully removing this obstacle, TAPARIA now awaits its turn to registration in China.
From our experience in China, it is really an uphill task to successfully oppose a trademark application based on prior use and reputation. The onus is always on the Opponent to prove its prior substantial use and reputation of the mark. The evidence should be plenty and relevant to mainland China. All evidence material should be translated into Chinese and this adds to the opposition costs substantially. Interestingly, an applicant doesn’t need to prove anything.
-- Authors: Advocate Dinesh Nair & Dr Mohan Dewan R K Dewan & Co.