The South Korean HANKOOK group, dedicated to the tire industry, has a high reputation in China for its brand HANKOOK and its corresponding Chinese name 韩泰. “HANKOOK” has been recognized as a well-known trademark.

In this case, since more than 5 years have passed since the registration of the disputed mark, we initiated an invalid declaration based on the well-known status of the “HANKOOK” mark and the malicious intent of the registrant. The difficulty of this case lies in the fact that even if the well-known “HANKOOK” mark has been recognized before, due to the examination principle of case-by-case, it needs to be re-recognized in this case.

In the first instance judgment, the Beijing Intellectual Property Court recognized that the evidence submitted by the plaintiff can prove that before the application date of the disputed mark, the plaintiff had continuously and extensively sold the approved tire products of the cited mark, and the “HANKOOK” mark had gained a high reputation and been widely known to the relevant public. It should be recognized that the “HANKOOK” mark had become a well-known trademark before the application date of the disputed mark, and thus the plaintiff was the owner of the well-known trademark.

Apart from the trademark in this case, the third party had also applied to register multiple trademarks highly similar to the plaintiff’s well-known trademark, which constituted a situation of copying and imitating the plaintiff’s well-known trademark. Moreover, in the third party’s business operations, they relied on the plaintiff’s business reputation and intended to cause confusion, showing a clear malicious intent. Considering their actions, it can be concluded that the third party’s application for registration of the disputed mark was done in bad faith. Therefore, the application for registration of the disputed mark violated the provision of Article 13-2 of the Trademark Law. Ultimately, the disputed mark was declared as invalid.

In this case, even if the cited mark has been recognized as a well-known trademark, it still needs to be re-recognized, which indicates that in some cases, even if there is a precedent, the examination principle of case-by-case needs to be implemented.