Background

    Kangxin Partners, P.C., on behalf of IM BRANDS, LLC (hereinafter referred to as “the Client”), filed an opposition with China Trademark Office (“CTMO”) against the mark, under No. 16390426 in Class 3, which was preliminarily approved and published in Trademark Gazette No. 1487.

Below are the details of the opposed mark:

Process

We filed a trademark opposition action against the mark on April 13, 2016.  In the pleading, we argued that:

    1)      The opposed mark is confusingly similar to the cited mark,  (IR No. 1122994) over connected goods;

    2)      Registration and use of the opposed mark infringed the client’s prior name right;

    3)      Registration and use of the opposed mark will easily mislead and confuse the relevant public regarding the source and origin of the goods;

    4)      Registration of the opposed mark is a rush registration of other’s mark, in violation of the principle of good faith.

We filed the supplementary pleading along with relevant evidence on May 12, 2016. In the pleading,

    1)      We introduced the client’s designer, Isaac Mizrahi, as a famous clothing designer;

    2)      We submitted reputation evidence, such as sales data, media releases to prove that Isaac Mizrahi conducted log-term, extensive and consistent promotion and use in China;

    3)      The opposed mark copied and imitated the client’s name, Isaac Mizrahi in bad faith;

    4)      We submitted a similar precedent regarding name right as support;

    5)      The opposed party filed many famous trademarks of other brands; they had persistent malice in filing trademarks.

    6)      We also emphasized that the opposed mark’s designated goods are strongly connected with the client’s registered goods in fashion field. 

Key features

There are 2 key issues of this case:

The first issue is to prove that registration of the opposed mark infringed on the client’s name right.

    - First, we need to prove that Isaac Mizrahi is the name of a famous American clothing designer. The client enjoys name right over his name.
    - Second, Isaac Mizrahi is not only the client’s name, but also a mark used over the client’s own brand. Moreover, the mark has acquired a high reputation and influence through long-term, extensive and consistent promotion and use. The opposed party should be aware of the client’s mark.
    - Third, the opposed mark is identical to the client’s mark, and the designated goods are strongly connected with the designated goods of client’s mark. Therefore, the designated goods of both marks constitute similar goods; registration and use of the opposed mark will confuse and mislead the relevant public.
    - Last, we also need to prove that the opposed party registered the mark in bad faith by emphasizing that the opposed party filed many famous trademark owned by other brands.

Therefore, the client’s name right should be protected, and the opposed mark should not be approved for registration.

The second issue is to collect the relevant evidence.

    The client is a famous clothing designer in the United States. Currently, there is no any distributor or physical or online stores selling the products. Therefore, the use and reputation evidence that the client can provide is limited, including the trademark registration certificate of “Isaac Mizrahi” in the United States, and some media releases aboard.

    Under this circumstance, we need to collect as much evidence as we can to prove that the mark, “Isaac Mizrahi” has acquired a certain reputation and influence amongst the relevant goods, such as “clothing, etc.” In the supplementary filing period, the evidence submitted includes, introduction of the client and his brand “Austin Scarlett” some reach results of “Isaac Mizrahi” via Baidu, China media reports for the “Isaac Mizrahi” fashion show, comment and reports of the online media about the client and his “Isaac Mizrahi” since 2013, relevant product pictures of  “Isaac Mizrahi” etc.. All of the above evidence can prove that the name and the brand of the client have been widely known and acquired a certain reputation over the goods “wedding dress, etc.” before the opposed mark’s filing date.

    In a case of proving prior right, such as prior name right in our case, the client’s right should exert a certain reputation and influence before the opposed mark’s filing date within the territory of mainland China. In this case, the media releases abroad can prove this to some extent considering the reputation of the certain media and the popularity of the Internet today. Furthermore, the media reports and search results in China can better prove that the connection between the client’s name and the client’s brand is recognized by the Chinese customers and acquired a certain reputation before the opposed mark’s filing date.