CHINA TRADEMARK OFFICE RULED IN FAVOR OF TAPA APAC AGAINST SCIS'S APPLICATIONS OF THE"TAPA" TRADEMARK
SHANGHAI, CHINA, 23 June 2020 – The China Trademark office (China TMO) has issued two decisions in favor of TAPA APAC on oppositions against Shanghai Credit Information Service Co., Ltd.’s (SCIS) trademark applications for “TAPA” in October 2019 (No. 26084890) and April 2020 (No. 26103137), respectively. The Office held that SCIS’s applications are invalid and have damaged TAPA APAC’s copyright of the “TAPA” logo.
On 28 August 2017, SCIS filed (through its affiliated company) two trademark applications for “TAPA” with China TMO without TAPA APAC’s authorization.
Under the first application (No. 26084890), SCIS attempted to acquire the ownership of “TAPA” trademark for its use in courier services, including messages and merchandise. The second application (No. 26103137) seek for legal use of the “TAPA” trademark on coaching; correspondence courses; teaching; instruction services; vocational retraining; arranging and conducting of congresses; arranging and conducting of conferences; arranging and conducting of workshops; arranging and conducting of symposiums; and providing online electronic publications, non-downloadable.
TAPA APAC filed oppositions with China TMO, requesting that these two applications be rejected based on the following grounds here mentioned below.
SCIS’ applications are substantially similar to TAPA APAC’s prior trademark, trade name and the “TAPA” logo. SCIS’ applications have damaged TAPA APAC’s right to its trade name and damaged the interests of TAPA APAC, owner of the well-known trademark. TAPA APAC’s “TAPA” logo has been widely in use and well-known throughout the world, including in China. Thus, SCIS’ applications have also damaged TAPA APAC’s copyright to the “TAPA” logo.
SCIS used to be TAPA APAC’s agent in mainland China and had been in knowledge of TAPA APAC’s “TAPA” logo and has access to the above. SCIS should have acted honestly and in good faith. However, SCIS still applied for the trademark highly similar to TAPA APAC’s “TAPA” logo without its authorization, and, thus, it is in violation of the trademark law.
In an attempt to setter this matter amicably, TAPA APAC sent a legal letter to SCIS, requesting that they transfer these two applications to TAPA APAC, or, voluntarily withdraw the same. However, SCIS has rejected TAPA APAC’s request and continued with unauthorised usage of TAPA APAC’s trademark. Under the consideration that SCIS was not willing to settle this matter amicably, TAPA APAC chose to continue with the proceedings with the China TMO.
TAPA APAC have received favourable decisions from the China TMO for both of the cases, deciding that that SCIS’ applications (Nos. 26103137 & 26084890) shall not be allowed for registration on all of their designated services.
Based on the evidence submitted, it can be presumed that TAPA APAC or its affiliates have the copyright for the “TAPA” logo, a work of fine art. The evidence submitted proved that SCIS (as well as its affiliated company) used to be the agent of TAPA APAC and should be aware of TAPA APAC’s trademarks. Thus, the subject applications have damaged TAPA APAC’s copyright of the “TAPA” logo.
For both applications, SCIS did not file any appeal against the decisions within the required 15-day period from the date of receipt of the notice. China TMO’s decision on opposition has become final and SCIS’s said trademark applications are invalid.
Chairman of TAPA APAC Tony Lugg said, “TAPA APAC takes seriously any unauthorized use or infringement of its patents, trademarks, or any other intellectual property. Legal action was taken after an attempt to resolve the matter amicably with Shanghai Credit Information Service Co., Ltd.’s (SCIS) failed. The China Trademark office found in favour of TAPA APAC, which is a major win for TAPA members especially those located in China.”
TAPA terminated its relationship with Shanghai Credit Information Service Co., Ltd.’s (SCIS) after the new law on foreign Non-Governmental Organisations ("New NGO Law") came into effect in China in January 2017. Under the New NGO Law, it was no longer lawful for a foreign NGO to recruit members, carry out activities, or collect fees from members unless a representative office is properly registered in China or relevant documents have been submitted for the purposes of carrying out temporary activities. As TAPA China Chapter was registered in Hong Kong and not China, it could no longer continue to operate lawfully in China. SCIS were informed and the dissolution of TAPA China Chapter was completed on 16 March 2017.
In 2019, represented by Lawyers Withers KhattarWong in Singapore, TAPA APAC Chairman and Board reported at its Annual General meeting that Ernst & Young Hua Ming LLP who were appointed by TAPA Asia Pacific to audit the accounts of TAPA China Chapter, managed and controlled by SCIS, were unsuccessful in auditing the accounts due to SCIS' non-cooperation.
Tony Lugg said, “This trademark case concludes a series of legal actions in China to protect TAPA APAC members association and Trademark. During this process, attempts were made to damage mine and the reputation of my board members. I personally took charge of the legal case to protect the board, who are volunteers, from being personally attacked. In the end, integrity, ethics and resilience won through.”
Lawyers Withers KhattarWong Singapore represented the TAPA APAC board at the 2019 Annual General Meeting. Lawyers in the case of the Trademark application were Corner Stone & Partners and Ernst & Young LLP is the appointed auditor for TAPA APAC.