The U.S.- based Ergo Chef had a rift with its exclusive cutlery distributor in Asia- Guangdong Xinanya Trading Company- over No.15543866 trademark "ERGO CHEF" and its figure (trademark in dispute), which was applied to be used on goods such as light, electric fryer and refrigerated cabinet. Recently, Beijing High People's Court rebuffed Xinanya's appeal in its final judgment and upheld the rejection decision of the Trademark Review and Adjudication Board (TRAB) under the then-State Administration for Industry and Commerce (SAIC).

The trademark in dispute was filed for registration by Xinanya on October 21, 2014 and designated to be used on Class 11 goods including light, electric fryer, bath fitting, refrigerated cabinet and water purification installation. After preliminary examination, the trademark in dispute was published on September 6, 2015.

On December 9, 2015, Ergo filed an opposition request to the then- SAIC's Trademark Office (TMO), alleging that as a licensee of its "ERGO CHEF" trademark, manufacturer and distributor of its products, Xinanya applied for registration of the trademark in dispute without its authorization, damaging its trade name right, which should be construed as an act of securing illegitimate benefits by free riding its popular trademark.

The TMO held that Xinanya was the Chinese distributor of Ergo's products affixed with the "ERGO CHEF" and its figure trademark. Xinanya, without any authorization, applied for registration of the trademark in dispute identical to Ergo's prior trademark. Accordingly, the TMO disapproved the registration of the trademark in dispute.

The disgruntled Xinanya then lodged a reexamination request to the TRAB on May 26, 2017, claiming that the trademark in dispute was for use on independent products based on actual business need and had gained high popularity through long- term use and promotion. In addition, in terms of the goods the trademark in dispute was designated to be used on, there was no distribution ties between it and Ergo. Xinanya requested an approval of the registration of the trademark in dispute.

On June 5, 2018, the TRAB held that the trademark in dispute is identical to Ergo's prior trademark "ERGO CHEF" and its figure, and the goods on which the trademark in dispute was designated to be used are closely connected with the cutlery products on which Ergo's prior trademark was certified to be used. Therefore, the TRAB made a decision to disapprove the registration of the trademark in dispute.

Xinanya refused to buy the TRAB's decision and brought the case to Beijing IP Court, but would only experience frustration again, triggering its last-resort attempt at Beijing High People's Court.

After hearing, Beijing High held that the goods including toasters and electric cookers on which the trademark in dispute was designated to be used belong to household goods, and are similar to cutleries in sales channels, using occasion and target customers. In addition, the trademark in dispute is identical to Ergo's prior trademark which was approved to be used on cutleries. Considering that Xinanya Company was a cutlery agent for Ergo, its application of the trademark in dispute was in bad faith. The coexistence of the trademark in dispute and Ergo's prior trademark which was certified to be used on cutleries would confuse the relevant public. In this connection, the Court denied Xinanya's appeal and upheld the first-instance judgment.  
Source: China IP News