China’s IP agency fined $11,000 for filing Copycat Bentley trademark applications

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In June 2021, Beijing Xicheng District Market Regulation Administration (“Beijing AMR”) issued a warning and fined 70,000 RMB (approximately US$11,000) to Beijing Sihailong Intellectual Property Agency Limited for filed applications for a Hong Kong copy company. which “shared” the same Chinese name as Bentley Motors Limited. Jing Xi Shi Jian Fa Zi (2021) 398.

The agency filed over 28,000 applications in 2020, placing it among the top 20 trademark filers in China.

Fund

Bentley Motors Limited (“Bentley”) is renowned for the production of luxury Bentley cars. Bentley is a historic brand with roots dating back to the early 20th century. Bentley is best recognized by reference to its iconic Flying B logo.

Bentley officially entered the Chinese market in the early 2000s. But before that, the public was exposed to the brand through automotive magazines. Additionally, Hong Kong-based dealerships sold up to a hundred Bentley cars in the 1990s to mainland customers. Bentley’s highly publicized official launch at the Beijing Auto Show in 2001 caused a stir. China quickly became one of the biggest markets for Bentley cars. In the first half of 2021, Bentley sold 2,155 cars in China, making China its largest market in the world today.

Bentley also offers other luxury products, partly through collaborations with other brands such as Breitling for watches, Naim for audio, Club House Italia for furniture, Professional Golf Europe for golf equipment, etc China is also the world’s largest market for Bentley Home products. .

Battles against counterfeiting

Bentley has faced serious intellectual property issues in China. A recent search revealed a number of third party marks containing the BENTLEY name or the Flying B logo or variations thereof. To protect its brands, Bentley’s intellectual property strategy has involved numerous trademark oppositions, invalidations and other legal proceedings in China.

Key to improving Bentley’s legal position in China was to strengthen its case against “bad faith” filers, in particular, by showing that their marks should be recognized as “well known.” There has been notable official support in China for Bentley’s enforcement actions. In 2019, the China National Intellectual Property Administration (CNIPA), on its own initiative, rejected more than 200 trademark applications filed by a Hong Kong-based company calling itself “Bentley Motors Limited” (Company No. 2565500) on the grounds that the requests violated the fundamental principle of honesty and because they disrupted “normal order” and were likely to cause “negative social impact”. This laudable initiative by CNIPA has attracted the attention of the media. In 2020, the CNIPA and the Beijing Intellectual Property Court respectively granted notorious status to the BENTLEY brand (registration No. 862360) and the Flying B logo (registration No. 862359). In 2021, the CNIPA further confirmed the well-known status of the trademark “宾利” (Bentley in Chinese characters) (registration no. 3065194).

Despite all these efforts, numerous imitations of Bentley trademarks continue to proliferate and unauthorized use of Bentley trademarks continues apace. One example involved a “Bentley” mooncake which caused a media outcry in late 2020. There were also cases of “Bentley” wines, luggage, watches, perfumes, etc. There is also the problem of companies adopting a trade name that includes the name “Bentley”. Bentley “copycats” proliferate across most industries and aren’t just limited to luxury goods or automobiles.

Facts of the case

In 2021, Bentley became aware of a Hong Kong company that had adopted a Chinese name identical to Bentley. This company was called (in English) BEN MOTORS LIMITED (company number 3002859). The Hong Kong company has filed 20 trademark applications to register the Bentley name in Chinese characters and the “BENTLEY & Flying B logo” trademark. The Chinese agency responsible for these applications was Beijing Sihailong Intellectual Property Agency Limited. Bentley Motors Limited of the UK has instructed Marks & Clerk Intellectual Property Agency (Beijing) Limited to submit the appropriate complaints to CNIPA and AMR Beijing (where the Chinese Intellectual Property Agency is located).

Following the filing of complaints, the 20 incriminated trademark applications were all withdrawn. In addition, the Beijing AMR issued an administrative penalty decision against Beijing Sihailong. The decision concluded that Bentley’s reputation should be known to Beijing Sihailong and therefore she should know that the client she was representing had no connection to Bentley’s genuine business. The agency had breached its duty of good faith under trademark law by failing to properly consider its clients’ applications and should therefore be sanctioned under trademark law.

Comment

The 2019 Amendment to China’s Trademark Law not only incorporated provisions aimed at combating trademark hoarding and misappropriation, but also added a stipulation that trademark agencies should not accept instructions for requests that violate the principle of good faith. These rules provided new remedies for rights holders beyond the usual practice of filing oppositions. The complaints in this case represent an example of the application of the new rules. There have also been reports of market regulators in other regions penalizing agencies for filing improper trademark applications. These welcome actions demonstrate the continued willingness of Chinese authorities to crack down on improper trademark applications.

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