Abstract
We, Kangxin Partners, P.C., filed an opposition action against the trademark, 
(No.69820804in Class18) (“the opposed mark”) on behalf of FURLA S.P.A. (“Client”) on July 24, 2023. The National Intellectual Property Administration, PRC (“CNIPA”) examined the case and decided to reject the opposed mark for registration.
Background
FURLA S.P.A. is the manufacturer of the Italian luxury brand FURLA, which was established in Bologna in 1927. As one of the major players in the global luxury leather goods market, FURLA represents high-end quality, vibrant creativity, endless joy, and the modern Italian lifestyle. Its product range includes handbags, footwear, and premium leather accessories for both women and men. FURLA's stores are present in over 100 countries worldwide. With more than 400 boutiques located on prestigious international shopping streets, FURLA offers consumers exquisite service and a relaxed, enjoyable shopping experience. The client has branches in Italy, Japan, the United States, France, Spain, Hong Kong, Mainland China, the United Kingdom, Australia, and Germany. Through long-term usage and promotion, FURLA has established a strong brand image and gained a certain level of recognition among consumers. The client was of the opinion that the opposed mark is a “similar mark over similar goods” compared with their mark 
under application No.69820804. Upon communication with client, we were entrusted to file opposition against this trademark.
The comparison of the marks is as below:
Key Issues
In the opposition, we mainly argued that:
1) The opposed mark constitutes a “similar mark over similar goods” compared to Cited Marks. Thus, it should not be approved for registration according to Article 30 of China Trademark Law;
2) Given that the opponent and Cited Marks enjoy high reputation, co-existence of the opposed mark and Cited Marks will more easily cause confusion and misunderstanding to relevant public.
On April 10, 2024, the CNIPA issued the decision: the opposed mark is similar to Cited Marks in terms of literal composition and overall appearance. The designated goods of the opposed mark are conflicting with those of Cited Marks according to Chinese Classification of Goods and Services. Co-existence of them in the market will easily cause confusion and misunderstanding amongst the consumers over the source of goods. Therefore, the opposed mark is in violation of Article 30 of Chinese Trademark Law.
Key Point of the Case
The key issue of this case is that 1) the goods of the opposed mark are similar to those of the opponent’s cited mark, and 2）the opposed mark is a “similar mark” with the cited mark.
With respect to issue 1, the opposed mark's goods fall in subclass 1801 and 1802, part 1, which are covered by the cited marks. Thus, the goods of the marks are similar according to the Chinese Classification of Goods and Services.
With respect to issue 2, Cited Marks were originally created by the opponent and they possess strong distinctiveness, Cited Marks have acquired a high reputation through use and promotion. Cited Marks and opposed mark share the letters “FUR*A”, with only one letter difference, so they constitute "similar marks" in terms of literal composition, design style, pronunciation, meaning and overall appearance. We also submitted several precedents to further prove that the opposed mark is similar to Cited Marks. Taking into all these factors into account, the opposed mark are confirmed similar to the cited marks by the CNIPA.
