Invalidation action against the trademark No. 38050473 for  requested by Bulgari S.p.A..

[Basic Information]

Disputed Trademark: No. 38050473 for

Prior Trademark Rights: No. 21553865 and No. 31549629 for

Prior Copyright: Art Work for

Applicant: Bulgari S.p.A.

Disputed Party: Liu Rongjun

[Case Information]

Liu Rongjun ("the Disputed Party" hereinafter) filed a trademark application for the disputed trademark No. 38050473 to the China National Intellectual Property Administration ("the CNIPA" hereinafter) on May 8, 2019, and it was approved for registration on May 13, 2022.

Bulgari S.p.A. (the applicant in this case, hereinafter referred to as "Bulgari") entrusted Kangxin Partners, P.C. to file a request for invalidation of the disputed trademark on June 28, 2022, on the grounds that the disputed trademark and the prior marks No. 21553865 and No. 31549629 (hereinafter referred to as "Cited Mark 1" and "Cited Mark 2") constitute similar marks over similar goods, and that the disputed trademark infringed upon Bulgari's prior copyright over the snakehead design .  Bulgari requested that the disputed trademark shall be invalidated.

Liu Rongjun argued that the disputed trademark is distinctive and its application complies with the provisions of China Trademark Law, and that the disputed trademark and cited marks do not constitute similar trademarks over same or similar goods.  After a period time of use, the disputed mark gained a certain reputation.  He requested that the registration of the disputed trademark shall be maintained.

[Official Decision]

On December 12, 2023, the CNIPA issued a decision for the invalidation action, deciding that the disputed trademark shall be invalidated.  The main facts and conclusions are as follows:

1. The disputed trademark and Cited Mark 1 are similar in terms of compositional elements and overall appearance.  Coexistence of the disputed trademark and Cited Mark 1 in the market is likely to cause confusion and misunderstanding among the relevant consumers, violating Article 30 of China Trademark Law.

2. The snakehead design claimed by Bulgari is an intellectual creation with a certain form of expression, qualifying it as an art work protected by the Copyright Law of the People's Republic of China.  The evidence submitted by the applicant can prove that before the filing date of the disputed trademark, products with the involved art work were promoted in magazines such as L'officiel, grazia, Marie Claire, ELLE, Vogue, Harper's Bazaar, etc..  Based on the promotional evidence and the sales records of products with the involved snakehead design by Bulgari before the filing date of the disputed trademark, in the absence of contrary evidence, it can be determined that Bulgari enjoyed copyright on the involved snakehead design or was an interested party for the involved snakehead design before the filing date of the disputed trademark.  The evidence can prove that before the filling date of the disputed trademark, Bulgari promoted and used the involved snakehead design on bags and other products.  According to the disputed party, they were involved in the business of bag products, leading to an overlap in the business scope of both parties. Consequently, the disputed party may have had the opportunity to access the involved snakehead design.  The disputed trademark and the involved snakehead design are both graphics based on the prototype of a snakehead, and they are substantially similar as they are similar in overall appearance, graphic composition, visual effect, etc..  Therefore, the registration of the disputed trademark violates Article 32 of the China Trademark Law.

[Significance]

This case involves the protection of both prior trademark rights and prior copyright.  For trademarks with graphic designs, the applicant can seek protection not only from the trademark perspective but also from the copyright perspective.  This case protected Bulgari's prior trademark rights and copyright, preventing potential mistaken purchase, thereby also protecting consumer rights.