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May 12,2020
Express n° 13 Case: TM ∣ Facebook’s house marks in Class 42 were invalidated for conflicting with an earlier mark owned by a Chinese individual
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On March 20, 2020, the China National Intellectual Property Administration (CNIPA) issued two decisions, declaring the invalidation of the registration of Facebook’s house mark “FACEBOOK” in respect of the website and search engine services in Class 42. The invalidation proceedings were initiated by a Chinese individual based on his earlier registration of the trademark “FACEBOOK” in Class 42, which was applied on May 19, 2006 and was granted for registration after going through the opposition, the review and 2 instance administrative litigation procedures lodged by Facebook. While Facebook’s marks were filed on November 20, 2007 and March 4, 2014. In the invalidation cases against its own marks in Class 42, Facebook argued in its response for the prior use of “FACEBOOK” as trademark and trade name as well as asserted the bad faith of the individual mark owner, but none of the claims were accepted by the CNIPA.
Meanwhile, when responding to the invalidations, Facebook raised fresh action, namely invalidation, against the individual’s prior mark. However, the main arguments are basically the same as those previously stated in the opposition and subsequent appeals, Facebook’s invalidation was denied February 25, 2020 due to res judicata. Unless new evidence can be presented to support the invalidation against the prior mark, as long as the prior mark stays alive, Facebook may have little chance to maintain its own registration in Class 42.
Meanwhile, when responding to the invalidations, Facebook raised fresh action, namely invalidation, against the individual’s prior mark. However, the main arguments are basically the same as those previously stated in the opposition and subsequent appeals, Facebook’s invalidation was denied February 25, 2020 due to res judicata. Unless new evidence can be presented to support the invalidation against the prior mark, as long as the prior mark stays alive, Facebook may have little chance to maintain its own registration in Class 42.
Contributed by: Mingming Yang