How does a tea beverage trademark dispute reshape the coffee shop industry?

A trademark reading "Cha Yan Se" was applied for by Guo in June 2018, approved the same year, and registered in March 2019. The Chinese intellectual property administration later declared it invalid, finding it highly similar to the genuine Cha Yan Yue Se in characters, pronunciation, and graphic design. The registrant sued the CNIPA over that ruling and lost before the Beijing Intellectual Property Court.

The case follows an earlier round in which Cha Yan Guan Se sued Cha Yan Yue Se for infringement and lost, after which Cha Yan Yue Se won a countersuit. Two similarly named marks kept appearing because a ride-along brand is cheap to register while enforcement is slow. For the broader coffee and tea shop industry, the outcome signals that text and device similarity can be enough to void a registration, and that deadlines for filing an invalidation request matter.

Trademark disputes in the tea beverage industry are stirring up trouble once again. Previously, Coffee Workshop reported that "Cha Yan Guan Se" sued "Cha Yan Yue Se" for trademark infringement and lost, and "Cha Yan Yue Se" countersued "Cha Yan Guan Se" and won. Now, out of nowhere comes "Cha Yan Yue Se." This trademark, applied for registration in 2018, was declared invalid by the China National Intellectual Property Administration because it was highly similar to the genuine Cha Yan Yue Se in terms of text composition, pronunciation, and graphic design. The registrant, Guo, refused to accept this and actually sued the CNIPA, only to be rejected by the Beijing Intellectual Property Court. From "Cha Yan Guan Se" to "Cha Yan Yue Se," imitators keep emerging, and this farce once again reminds us: trademark protection is by no means child's play. Although the road to brand rights protection is long, the law will ultimately provide a fair answer.

Here comes another case of the wrongdoer turning around and suing first! A few days ago, Coffee Workshop just reported that [Cha Yan Guan Se] sued [Cha Yan Yue Se] for trademark infringement but lost, and then [Cha Yan Yue Se] in turn won a lawsuit against [Cha Yan Guan Se]. Recently, out of nowhere came [Cha Yan Yue Se].

What exactly is [Cha Yan Yue Se]? A search of the China Trademark Office website under the China National Intellectual Property Administration shows that on June 8, 2018, Guo submitted a registration application for the [Cha Yan Yue Se] and device trademark. It was preliminarily approved in 2018 and completed registration announcement in March 2019.

As for the development history of the genuine [Cha Yan Yue Se], you can look it up yourself at Coffee Workshop.

[Cha Yan Yue Se] argued that the [Cha Yan Yue Se] trademark was highly similar to its brand image and could easily cause consumer confusion or misidentification. Therefore, it filed a request for invalidation of the registration of [Cha Yan Yue Se] and submitted corresponding evidence.

On March 11, 2021, the China National Intellectual Property Administration issued a substantive examination ruling on the invalidation declaration of the [Cha Yan Yue Se and device] trademark. Through Tianyancha, the following three grounds for the determination can be seen:

First, the prominently recognizable Chinese character portion of [Cha Yan Yue Se] and device is identical in pronunciation and similar in text composition to the cited trademark [Cha Yan Yue Se]; its prominently recognizable graphic portion is also highly similar to the cited trademark in design elements, visual effects, and other aspects, constituting a similar mark.

Second, the service items approved for use by [Cha Yan Yue Se], including "fruit juice, plant beverages, bean beverages, tea-flavored non-alcoholic beverages, soybean juice, ingredients for making beverages, beer, mineral water (beverages), non-alcoholic aperitifs, milk tea (not milk-based)," have a cross-search relationship with the goods and services of [Cha Yan Yue Se] and belong to the same or similar goods.

Third, according to evidence submitted by the third party [Cha Yan Yue Se], its series of trademarks have accumulated a certain degree of popularity in the field of "tea beverages," and through long-term use, the trademark and device have gained relatively stable market reputation and formed a relevant public group. On this basis, it was determined that the registration of [Cha Yan Yue Se] violated Article 30 of the 2013 Trademark Law.

Did you think that was the end of the matter? Far from it. In April 2021, the registrant of [Cha Yan Yue Se], Guo, actually filed a lawsuit against the CNIPA. Guo claimed that the brand was completely different from [Cha Yan Yue Se] in terms of text composition, pronunciation, and overall appearance, and that the approved goods differed in function, use, sales channels, sales locations, and other aspects. More critically, Guo claimed that after long-term promotion and publicity, his own brand had also acquired a certain market reputation, and therefore would not cause consumer confusion or misidentification.

However, recently, according to information from Tianyancha, the Beijing Intellectual Property Court has issued a final judgment and lawfully rejected Guo's appeal request.

Netizens have been complaining about this one after another: "This is a typical outlaw!" To dare to sue the China National Intellectual Property Administration after copying someone else's brand—if he had this much energy, he would be better off just doing a solid job with his products. Today, awareness of intellectual property and trademark protection is growing. Trademarks are crucial to enterprises, as they are signs that distinguish one company's goods and services from those of others. As a landmark brand of the new generation, Cha Yan Yue Se has risen to fame, and imitators have followed one after another—first "Cha Yan Guan Se," then "Cha Yan Yue Se." Coffee Workshop believes that protecting the lawful rights and interests of trademark owners and giving full play to the positive effects of local brands are of great significance to the healthy development of China's tea beverage industry.

Image source: Internet

The above content is compiled by CoffeeHunters, a coffee news website.