By Zhou Xiaoli, Sun Huanhuan, King & Wood Mallesons’ Intellectual Property group
Opposition against the Application for WAHL No. 33707057
（Recognizing the relevancy between the goods items designated in the opposed trademark and that designated in the cited marks in actual use, in accordance with the bad faith opposed party）
Opponent：WAHL CLIPPER CORPORATION
The opposed party：Yiwu Waha Household Appliances Co., Ltd.
Key words：Should know; Honesty and trustworthiness; Actual use; Relevancy between the goods items
Backgrounds：
The main reason of the opponent: before the application of the opposed trademark, the opponent’s cited trademarks have gained high popularity and influence, the opposed trademark is identical or similar to the opponent’s previously registered and used trademarks “WAHL” No. 18393195 in Class 3, “WAHL” No. 280072 in Class 8 and “WAHL” No. 14003711 in Class 8. The opposed party has the subjective Maliciousness of imitating the opponent’s trademark and take ride of the goodwill of the leading brands in the industry for its own benefit, and also has the intention to deceive and mislead the relevant public to confuse and misunderstand the source of the products. If the opposed party’s behavior is allowed, it is bound to harm the rights and interests of the real brand owner and cause confusion to the relevant consumers, leading to confusion in the market and causing many adverse social effects.
Opposition Decision: There are certain differences between the goods items designated in the opposed trademark and that designated in the opponent’s cited trademarks in terms of function, use and etc., the goods items of the marks are not similar, the trademarks of both parties do not constitute similar trademarks designated on similar goods. However, according to the evidence provided by the Opponent and the verification by China National Intellectual Property Administration(“CNIPA”), the Opponent is a multinational manufacturing company of hairdressing and beauty apparatus, before the date of application for the opposed trademark, the opponent’s “WAHL” and “SUPER TAPER” brands were used and promoted by the Opponent and its Chinese subsidiary in many countries and regions around the world, including the Chinese market, and have become well-known among the relevant public. The opposed party and the Chinese subsidiary of the opponent are located in Zhejiang Province, the opposed party should be aware of the opponent’s prior used trademark which enjoys a certain degree of reputation. The opposed trademark is identical to the “WAHL” trademarks, the goods items designated in the opposed trademark are not similar to the goods items “electric shovel, electric hair clipper and electric hair clipper accessories and etc.” designated in the cited marks, but they have certain relevancy in actual use. In addition, the opposed party also applied for “WAHA SUPER CLIPPER and device” 35984093, and “Device mark” No. 36609795. Although the above two trademarks have been rejected by CNIPA, the fact can prove that the opposed party has indeed copied, plagiarized and imitated others’ trademarks subjectively, and its behavior violates the principle of honesty and trustworthiness, and disrupts the market order of fair competition. In conclusion, the application of the opposed trademark violates Article 7 and Article 30 of the Trademark Law and shall not be registered.
King & Wood Mallesons represented WAHL CLIPPER CORPORATION in this opposition case. According to the Trademark Examination and Review Standards, similar goods refers to goods that are identical or have more relevancy to each other in respect of function, use, production department, sales channel and target consumers and etc. In this case, there are certain differences between the goods items designated in the two parties’ trademarks in terms of function, use and etc., and they are not similar goods. However, considering that the opposed party should have known that the opponent’s trademarks are well-known, however, it still applied for several identical or similar trademarks, including the opposed trademark, thus CNIPA recognized that the goods items designated in the two parties trademarks have relevancy in actual use. This case reflects the strict regulation of CNIPA regarding the obvious imitation of others’ well-known trademarks, and there is a certain breakthrough in the recognition on the relevancy of the goods items, which has a positive effect on combating malicious registration and safeguarding the legitimate rights and interests of the parties.