Recently, Beijing High People's Court made a final judgment on the trademark dispute between LABORATORIOS SUAVINEX, S.A. of Spain and American Equity Investment （Kunshan）， ruling that American Equity Investment obtained No.16523812苏维尼SUAVINEX trademark （the trademark in dispute） by illicit means, and upheld the decision of the Trademark Review and Adjudication Board （TRAB） under the former State Administration for Industry and Commerce （SAIC） and rendered the trademark in dispute invalid.

American Equity Investment filed the trademark in dispute for registration in March 2015, which would be certified to be used on Class 16 goods including crayons in September 2017.

LABORATORIOS SUAVINEX, S.A. lodged an invalidation request to the TRAB in March 2018, claiming that the trademark in dispute constituted similarity with its prior registered No.4965738 SUAVINEX trademark, No.4965740 SUAVINEX trademark and No.G985930 SUAVINEX trademark （the cited trademarks） when used on the similar products. American Equity Investment had infringed its trade name right and constituted squatting in bad faith.

The TRAB held that the trademark in dispute and the cited trademarks are not similar trademarks when used on the same or similar products, and the registration of the trademark in dispute had neither infringed LABORATORIOS SUAVINEX's prior trade name right, nor constituted squatting of a previously-registered reputable trademark. The cited trademarks, however, are composed of SUAVINEX, which is not a fixed phrase in English and has no fixed meaning. Its corresponding Chinese trademark was苏维妮， which is highly original. The trademark in dispute is similar with the above SUAVINEX and苏维妮 trademarks in Chinese and English words combination. In addition to the cited trademarks, American Equity Investment had applied for registration of a large number of trademarks same or similar with other companies' renowned trademarks, which passed the test of unfair competition. So the former TRAB nullified the trademark in dispute.

American Equity Investment then appealed to Beijing Intellectual Property Court, but suffered another setback.

The disgruntled American Equity Investment brought the case to Beijing High People's Court, claiming that the existing evidence is insufficient to prove that the Chinese transliteration of SUAVINEX trademark obtained by LABORATORIOS SUAVINEX is苏维妮。 The fact that SUAVINEX trademark enjoys high distinctiveness when used on baby bottle has no standing. In parallel, there is no evidence to prove that it has hoarded a large number of trademarks.

Beijing High held that the SUAVINE trademark owned by LABORATORIOS SUAVINEX was transliterated in Chinese as 苏维妮， and its use on baby bottles and other goods enjoyed high distinctiveness. The trademark in dispute is almost identical to the English part of LABORATORIOS SUAVINEX's SUAVINEX trademark. American Equity Investment has applied for registration of dozens of SUAVINEX trademarks that are identical or similar to the trademark of LABORATORIOS SUAVINEX and some trademarks similar to other well-known trademarks. The evidence submitted by American Equity Investment is insufficient to prove that the registration of above-mentioned trademark has a true and honest intention for commercial use. Such act corrupts the order of normal trademark registration, so the application for registration of the trademark in dispute should be prohibited. In this connection, the Court finally rejected the appeal of American Equity Investment and upheld the judgment of the first instance.（by Wang Guohao）

(Source: CHINA INTELLECTUAL PROPERTY NEWS)