Abstract

We, Kangxin Partners, P.C., filed an opposition action against the trademark, YDL-GIESSE (No. 74746708 in Class 6) (“the opposed mark”) on behalf of GIESSE S.P.A./吉斯股份公司 (“client”) on March 13, 2024.  The National Intellectual Property Administration, PRC (“CNIPA”) examined the case and decided to reject the opposed mark for registration.

Background

The client is a globally recognized manufacturer of hardware accessories for doors and windows and has registered the trademarks "              " and "GIESSE" in mainland China for various goods, including those in Class 6.  The client's trademark "GIESSE" is highly distinctive.

The client was of the opinion that the opposed mark is a “similar mark over similar goods” compared with their prior registered marks.  We were entrusted to file opposition against this mark.

The comparison of the marks is listed as below:

Key Issues

In the opposition, we mainly argued that:

1) The opposed mark and the cited marks constitute the “similar marks over the similar goods”. According to Article 30 of China Trademark Law, the opposed mark should not be approved for registration;

2)  In light of the high reputation of the client and the cited marks, the registration and use of the opposed mark will easily cause confusion and misunderstanding amongst the consumers;

3)  The opposed mark was filed without the intention to use, but with bad faith and by improper means, in violation of the Articles 4, 7, and 44 of China Trademark Law.

On March 10, 2025, the CNIPA issued the decision and rejected the opposed mark, YDL-GIESSE (App. No. 74746708) for registration, reasoning that:

The opposed mark fully includes the composed letters in the cited marks "GIESSE."   The designated goods of the opposed mark are similar to those of the cited marks in respect to function, way of use, and sales places.  The coexistence of the two marks will cause confusion and misleading to the relevant public.  Thus, the marks constitute “similar marks over the similar goods,” in violation of Article 30 of China Trademark Law.

Additionally, the opposed party applied for the opposed mark is clearly intentional copy and imitation of the client's mark.  This behavior not only misleads consumers but also undermines fair competition in the market.  Furthermore, it contravenes the spirit of the Trademark Law, which prohibits obtaining trademark registration through deceptive or otherwise improper means.

Key Point of the Case

The key issue of this case is that 1) the opposed mark is a “similar mark” with the cited marks; 2) the goods of the opposed mark are similar to those of the client’s cited marks, and 3）the opposed party maliciously registered the mark without the use intention, which constitutes obtaining the trademark registration by improper means and violates the principle of good faith.

With respect to issue 1, obviously, the opposed mark is similar to the cited marks, because it fully contains the client's distinctive word mark, so they are similar in respect of composing letters, visual effect and pronunciation.  The opposed mark and the cited marks do not have specific meanings, therefore they can't be distinguished from each other in meaning either.

With respect to issue 2, according to the Chinese Classification of Goods and Services, the goods of the opposed mark are all similar to the goods of the cited marks.

Regarding the claim of "bad-faith," we highlighted that the opposed party also filed trademarks using the client's Chinese character marks, such as “斯来戈尔吉斯,” “金五斯吉,” and “华诺吉斯.”  We strongly argued this point, and as a result, the CNIPA concluded that the opposed party not only registered the mark for "GIESSE " but also applied separately for our client's Chinese mark "吉斯," without providing a reasonable explanation for its creative origin. Consequently, the CNIPA determined that the opposed party had clear intentions of copying and imitating another's mark, finally deciding not to approve the registration of the opposed mark.