BVLGARI, founded in 1884, is an Italian luxury brand.  In 138 years’ development, BVLGARI products have been welcomed by consumers in China and around the world, and BVLGARI brand has also gained high reputation.  It has been recognized as a well-known trademark and protected by the China National Intellectual Property Administration (“CNIPA”) many times. This article will analyze the standard of trial of Article 30 of the Trademark Law over the goods in Class 14 which BVLGARI brand was recognized as a well-known trademark through three opposition cases recently filed by Bulgari S.P.A.

    The first case is an opposition case filed by Bulgari S.P.A. against the trademark "宝格逸" (No. 43539936), citing the trademark "宝格丽" (IR No. 1130519), etc..  The first two Chinese characters of "宝格逸" and "宝格丽" are exactly the same, the pronunciation of the last Chinese characters is similar, and the overall appearance of the trademarks is also similar.  Finally, the CNIPA believes that the two parties’ trademarks constitute similar trademarks over similar goods, and did not approve the registration of "宝格逸" trademark.

    It can be seen that for trademarks composed of three Chinese characters, when two Chinese characters are the same, the pronunciation of the other Chinese character is similar and the overall appearance of the trademarks is similar, the CNIPA tends to protect the rights and interests of the prior obligee to avoid confusion and misunderstanding among consumers.

    The second case is an opposition case filed by Bulgari S.P.A. against the trademark "BVLGUKSI" (No. 44576928), citing the trademark "BVLGARI" (No. 340247) etc..  "BVLGUKSI" and "BVLGARI" are composed of four or more foreign letters.  The first four letters are "BVLG", which are exactly the same, and the last letter is "I", which is also the same.  This makes the two parties’ trademarks very similar in composing letters and overall appearance.  Finally, the CNIPA also considered that the two parties’ trademarks constituted similar trademarks over similar goods, and did not approve the registration of "BVLGUKSI" trademark.

    It can be seen that for a foreign trademark composed of four or more foreign letters, if the first and last letters are identical and the overall appearance is similar, the CNIPA will also protect the rights and interests of the prior obligee and will not approve the registration of the later filed similar trademark.

    The third case is an opposition case filed by Bulgari S.P.A. against the trademark "施蒂宝格丽泽尔达 STIEBEL GRIZELDA" (No. 44430624), citing the trademark "宝格丽" (IR No. 1130519), etc..  The trademark "施蒂宝格丽泽尔达 STIEBEL GRIZELDA" has a large number of words and complex composition, which is different from the "宝格丽" trademark in overall appearance.  However, it completely contains "宝格丽" trademark.  In addition, "宝格丽" trademark has strong distinctiveness and high reputation.  Therefore, coexistence of the two marks is very easy to cause confusion among consumers.  The CNIPA thus believes that the two parties’ trademarks are similar in composing characters, and therefore, the registration of trademark "施蒂宝格丽泽尔达 STIEBEL GRIZELDA" shall not be approved.

    It can be seen that in the case that two parties’ marks have certain differences in overall appearance, if the words of prior mark are fully included by the other mark, and considering the distinctiveness and reputation of the prior trademark, it is still easy to cause confusion among consumers, the CNIPA will still protect the rights and interests of the prior obligee and will not approve the registration of the later filed similar trademark.

    In the 3 cases, the designated goods of the two parties’ trademarks are similar, "宝格丽" and "BVLGARI" have strong distinctive and originality, and enjoy high reputation among the relevant public after long-term use and wide promotion.  In addition, the attorney argued in details the similarity of trademarks and the coexistence of trademarks will easily cause confusion among consumers.  Finally, all the above cases were supported by the CNIPA.

    If the prior obligee finds a similar trademark filed later over similar goods / services, please try to defend their own rights.  When representing similar cases, the attorneys can comprehensively analyze the similarity of trademarks and discuss the reasons for the non approval / invalidation of the opposed trademark / disputed trademark from multiple angles.  We believe that the CNIPA will make a fair decision on the case on the basis of full understanding of the facts of the case and under the guarantee of the China Trademark Law System.

Kangxin IP Platform-One-stop Smart Solution for a full range of IP services