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CHINA Facebook, Inc., Loses FACEBOOK Trademarks

Florence Dong | Sep 23, 2020

Facebook recently lost two registrations for the FACEBOOK trademark in China in classes central to the services it offers.

The China National Intellectual Property Administration (CNIPA) announced on March 20, 2020, its decisions to invalidate two trademark registrations of Facebook, Inc., (Facebook) in Class 42. The decisions were subsequently released to the public. Both invalidation actions were filed by an individual, Su Kaiming, who has a long-running dispute with Facebook over the FACEBOOK trademark in Class 42, based on his earlier trademark registrations.

Facebook filed its first trademark applications in China on March 30, 2006, for the FACEBOOK mark in Classes 35 and 38. It was not until November 20, 2007, that the tech giant filed an application for FACEBOOK in Class 42 (No. 6389503), the class into which the company’s core services fall. An additional application (No. 14108731) for FACEBOOK 脸谱 in Class 42 was filed on March 4, 2014.

Mr. Su, meanwhile, filed an application for the word mark FACEBOOK (No. 5359959) in Class 42 on May 19, 2006, one year earlier than Facebook’s first application in Class 42.

It took 11 years for Mr. Su’s application to mature to registration as Facebook actively opposed it, primarily based on its prior trademark rights in the word mark FACEBOOK in Classes 35 and 38, and accused Mr. Su of willful imitation of its prior trade name and of causing an unhealthy influence on society. The opposition underwent administrative review, as well as administrative litigation in both first and second instance, ultimately ending in a loss for Facebook. Mr. Su’s application for FACEBOOK was granted in 2017.

In 2019, Facebook continued to challenge Mr. Su’s registration by filing an invalidation action, based primarily on Article 10.1.7 of the Trademark Law (2013). It alleged the mark was misleading in terms of quality and origin of services. The invalidation was not granted by CNIPA.

Despite Facebook’s global reputation, its services have been blocked in China since 2007, which to some extent limits its ability to demonstrate its brand recognition in China. The legality of the invalidation decisions is backed by CNIPA based on Article 30 of the Trademark Law, which favors the first-to-file principle.

That said, this is likely not the endgame of Facebook’s trademark campaign in China. The social media company may still appeal the unfavorable invalidation decisions and the battle against Mr. Su may be continued.

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