Avoid pirate filings in Europe

Protection of Chinese companies’ trademarks in Europe is an important issue and Chinese companies must file their trademarks in order to avoid pirate filings.

Many Chinese companies still do not automatically protect their trademarks in Europe and as a result, more and more are facing bad-faith registrations filed for trademarks identical to their own, against which they try to fight with varying degrees of success.

Two recent cases illustrate this situation. The first involved the famous Chinese company Xiaomi Inc against an Italian company, Midarex SRL Con Socio Unico, which had filed a European trademark “XIAOMI” in classes 9, 37, 38 and 42, notably for products and services in relation with mobile telephones and communication services. This trademark was registered on 15 August 2012.

Xiaomi did not have any registered European trademark, or national registrations either, and when Xiaomi intended to file a cancellation action against this registration, the company had no other choice than basing its action on article 52(1)b of the European Union Trademark Regulations, which provide that a European trademark will be declared invalid where the applicant was acting in bad faith when the application was filed.

However, the implementation of this article raises several difficulties, among them the lack of legal definition of the concept of “bad faith” and the burden of proof, which lies with the demanding party in the cancellation action.

As far as the definition of bad faith is concerned, the cancellation division recalled that whether or not the trademark owner acted in bad faith when filing is subject to an overall assessment. One factor to be taken into consideration is whether or not the registrant knew, or must have known at the time of filing, that a third party was using an identical or similar trademark, for identical or similar goods, capable of being confused. However, this is not sufficient and notably the registrant’s intention when filing is also to be examined, this factor being a subjective one, and assessed by reference of the objective circumstances of the case.