Trademark Opposition Response Case No. 17063282

2025-11-19

【Basic Facts】
Plaintiff: Galileo Corporation
The respondent: Shenzhen Yunlian Optoelectronic Technology Co., Ltd. (represented by our firm)

The main argument of the opponent: The respondent has a commercial contract relationship with the opponent. The respondent is the opponent's supplier in China. The respondent applied for the registration of the disputed trademark without the opponent's permission, which violates Article 15 of the Trademark Law. The respondent violated the principle of good faith by maliciously registering the trademark that the opponent had used first and had a certain influence, and also infringed upon the opponent's prior copyright. The opponent provided evidence such as the introduction of the opponent's company, the business correspondence and product pictures in China of the opponent, and the product catalogues of the opponent from 2010 to 2015.

Defendant's defense reasons:
The respondent did not provide any contract or other evidence to prove that the respondent and the applicant had a supplier relationship, and the evidence provided by the applicant was insufficient to prove the actual use of the so-called prior-right trademark product in the Chinese market.
2. The company introduction and product catalogue provided by the respondent are self-promotional or self-produced evidence. The objectivity and authenticity of the information contained therein are questioned. The business transaction bills related to the respondent's operations in China that were not submitted with Chinese translations should be regarded as unsubmitted. These foreign language documents merely reflect the information and time of the buyer and seller, and have no connection with the alleged prior rights trademark and the 11 types of lighting products involved. They are insufficient to prove that the respondent's trademark has been used in China priorly and has achieved a certain degree of influence.
3. The trademark registration information provided by the respondent regarding the foreign-related territory is insufficient to determine the ownership of the copyright. Moreover, the prior-right trademark graphics cited by the respondent are not sufficient to prove actual use and dissemination within China, let alone reaching the level of the claimed fame and influence. There is no possibility that the respondent came into contact with the copyright of the respondent.

Objection Decision: The evidence provided by the objector is insufficient to prove the grounds for the objection. Therefore, our bureau will not support the objection.

【Typical Significance】
According to Article 32 of the Trademark Law, the protection of prior copyrights requires the fulfillment of four conditions: before the application for trademark registration, the other party had already enjoyed copyright in the prior work; the disputed trademark is identical to or substantially similar to the prior copyrighted work; the applicant for the disputed trademark has come into contact with or is likely to have come into contact with the copyrighted work of the other party; and the application for the registration of the disputed trademark was made without the permission of the copyright owner. In this case, the trademark registration certificate cannot alone be used as evidence to determine the establishment of prior copyright. Moreover, the respondent provided trademark registration certificates from foreign regions. In addition, copyright infringement generally adopts the principle of "contact + substantial similarity". The respondent has no possibility of having contact with the works of the respondent. According to Article 15 of the Interpretation of the Supreme People's Court on Several Issues Concerning the Application of Law in Civil Disputes over Copyright, "Works created by different authors on the same subject matter, whose expressions are independently completed and creative, shall be deemed to have independent copyrights by each author." Therefore, the disputed trademark was independently created by the respondent, and the respondent enjoys independent copyright.

【Related Laws and Regulations】
Article 32 of the Trademark Law: When applying for trademark registration, one shall not infringe upon the existing prior rights of others, nor shall one preemptively register a trademark that has been used by others and has gained certain influence through improper means.
Article 15 of the Interpretation of the Supreme People's Court on Several Issues Concerning the Application of Law in Civil Dispute Cases Involving Copyright stipulates: Where works on the same subject matter are created by different authors, and the expressions of these works are independently completed and possess creativity, it shall be determined that each author enjoys independent copyright.

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