J.CHOO LIMITED is the owner of famous brands “JIMMY CHOO” and “CHOO” for women’s shoes and other fashion articles. One of the founders of J.CHOO LIMITED, Mr. JIMMY CHOO assigned all his rights related to his name, JIMMY CHOO to J.CHOO LIMITED. The client was of the opinion that the opposed mark damages the name right of Mr. JIMMY CHOO. Upon communication with client, we were entrusted to file a trademark opposition action against this trademark.
The details of the opposed mark is as below:
Process
We filed opposition action against the opposed mark on June 26, 2017. In the opposition, we mainly argued that:Brief of Process of the Case:
1) The registration of the opposed mark damages the prior name right of the shoes designer, Mr. JIMMY CHOO. According to the Article 32 of the Trade Mark Law, the opposed marks shall be rejected for registration;
2) The high reputation of the JIMMY CHOO mark remarkably enhanced Mr. JIMMY CHOO’s reputation among the relevant consumers. A sole association has been established between the JIMMY CHOO mark and Mr. JIMMY CHOO;
3) The opposed marks are deceptive, and will confuse and mislead the relevant public over the quality and source of goods;
4) The registration of the opposed mark violates the Principle of Good Faith.
On June 11, 2018, the CTMO issued the decision: The evidence submitted by the opponent, including on-line search results, brand introduction and kinds of medias’ reports, can prove: “JIMMY CHOO” is the name of opponent’s founder, and he, as a shoes designer, enjoyed certain reputation in the field of fashion products before the opposed mark’s filing date. The opposed mark is same with the designer’s name, considering JIMMY CHOO is not an inherent English word and the opposing party did not make any reasonable explanation regarding this issue, and thus, the opposed mark does damage the name right of Mr. JIMMY CHOO. In addition, the opponent has registered the designer’s name “JIMMY CHOO” as trademark over goods in Classes 3, 9, 14, 18 and 25 before the opposed mark’s filing date, and the trademark has obtained certain reputation amongst Chinese relevant public through the opponent’s promotion and use.
Except of the opposed mark, the opposed party also filed trademark registrations, which are same with the other parties’ earlier famous mark with respect to word or device, and the opposed party did not make a reasonable explanation to this. Therefore, this Office holds that the opposed party had bad faith to copy others’ trademark when he filed trademark registrations, which disrupted the normal order of trademark registration, damaged fair competition market order and violated the principle of honesty and good faith.
Key Features
The key issue of this case is that the opposed mark’s registration may damage Mr. JIMMY CHOO’s name right, and Mr. JIMMY CHOO enjoys certain reputation amongst relevant public. In the opposition, we collected medias’ report about JIMMY CHOO, and protection records of Mr. JIMMY CHOO’s name right to prove Mr. JIMMY CHOO’s certain reputation. In addition, we also collected evidence to prove that the JIMMY CHOO mark also enjoys high reputation so indirectly prove Mr. JIMMY CHOO’s reputation. The opposed mark is same with Mr. JIMMY CHOO’s name, and Mr. JIMYM CHOO enjoys high reputation, thus, the opposed mark’s registration may misled the public that there is association between the opposed mark and Mr. JIMMY CHOO, consequently damages Mr. JIMMY CHOO’s name right.
On June 11, 2018, the CTMO issued the decision and decided to reject the registration of the opposed mark.
