Bulgari Well-Known Trademark Opposition Case – Kangxin Intellectual Property Lawyers

Bulgari Well-Known Trademark Opposition Case

date: 2017-12-27

Background

Our client, Bulgari S.P.A., entrusted our firm to file an invalidation action against the mark, (No. 10068630, under the name Shanghai Zhongguo Investment Management Co., Ltd.) over the services, “Hairdressing; Beauty parlor services; Massage; Cosmetologist services; Manicuring; Aromatherapy services; Health care; Sauna services; Livestock breeding; Landscape design,” in Class 44.

Process
The key issues of this case are
1) whether the disputed mark, , is a copy and imitation of the well-known trademark,, and will mislead the relevant consumers and harm the applicant’s interests; and
2) whether the registration of disputed mark, , was obtained through other improper means.

Regarding the first issue, the main challenges are
    1) how to prepare evidence to prove that the cited mark,  (No. 3811212) was a well-known trademark before October 14, 2011, the filing date of the disputed mark;
    2) how to prove that the disputed mark is a copy and imitation of the cited mark;
    3) how to prove the connection of the disputed mark’s designated services in Class 44 and the cited mark’s designated goods in Class 14, and that the co-existence of the two marks will mislead the relevant consumers and harm the applicant’s interests.

Regarding the above Point 1, Kangxin worked with BULGARI’s in-house counsel in Rome and Shanghai to collect evidence showing use, promotion, and reputation of their cited mark for the invalidation action. In addition, we conducted a National Library search for the cited mark, finding over 1,300 media comments and reports during the years, 2014 to 2018. We gathered convincing evidence that shows the long-term, large and widespread use and reputation of the mark, , from all different aspects.

Regarding the above Point 2, we mainly argued the similarity of the marks from the aspect of composed Chinese characters, and that the disputed mark completely contains the Chinese part of the cited mark.

Regarding the above Point 3, we mainly argued the connection of the services and goods from the aspects of the target consumers, and the connection of the industries of these services and goods. In addition, we argued that misleading relevant consumers and harming the applicant’s interests would occur through dilution of the well-known status of the cited mark.

Regarding the second issue, we argued that the marks the disputed party filed are either the same as or similar to the applicant’s marks, which enjoy strong distinctiveness. According to Articles 10.1.8 and 44.1, and similar precedents, the registration of the disputed mark was obtained through improper means.

The client’s mark, (No. 3811212), was recognized as a “well-known trademark” over the goods, “Ornaments [jewellery, jewelry (Am.)]; Watches.”

Key Features

The most important issue for the favorable decision is the sufficiency of the evidence. In this case, we worked and communicated well with the client’s in-house counsel to obtain this material.

We communicated with the examiners before the decision was made in order to stay informed on the development of the case, which also conveyed our attention to the case to the examiner.

Significance

1. It is quite difficult to obtain a “well-known trademark” designation in administrative cases, especially during the TRAB stage, as opposed to administrative litigation;

2. The evidence can be used in later cases;

3. The client also benefits from this case; the examiners will take the recognition of the well-known trademark status into consideration in subsequent opposition and invalidation cases;

It is the combined mark, , that is recognized as a well-known trademark, which will be helpful to combat any trademark squatters, copying either the Chinese part or the English part of the mark;