BVLGARI Snakehead Trademark – an amazing and wonderful case of safeguarding rights
date: 2022-12-27 Shuang Lin Read by:

    When speaking of BVLGARI, most people will think of gorgeous jewelry.  In addition to jewelry, BVLGARI bags and accessories are also loved and popular among the consumers.  For BVLGARI bags, the one we must mention is BVLGARI SERPENTI series.  BULGARI puts SERPENTI series bags on sale in 2011 and won a large number of consumers' love.  For this series of bags, there is usually a snake head in the front of the bag, which is also the symbol of BVLGARI SERPENTI series bags



    (BVLGARI SERPENTI FOREVER bag, from BULGARI official website)

    Today, we are talking about a case of this snakehead trademark over goods of bags in Class 18.  The beginning of this case is a little bit magical.  The right of BVLGARI snakehead trademark over goods in Class 18 in China can be traced back to the3D trademark "2.png" applied by BULGARI in Italy on October 7, 2014.  Based on the priority of this trademark, BULGARI applied for international registration No. 1271020 and extended its protection to China.  However, the extension of protection of this 3D international registration in China was rejected by the CNIPA due to being lack of distinctiveness.  BULGARI abandoned the extension of this IR mark in China and directly applied for a national trademark No. 21553865 for "3.png" in Class 18 on October 13, 2016.  This trademark was successfully registered on November 28, 2017, and BULGARI successfully obtained the exclusive right for this trademark.  It seemed very smooth, but this case was not so simple.

    In May 2018, BULGARI received a Notification of Response for Invalidation, which was filed against the device mark No. 21553865.  This invalidation was initiated by a Chinese individual Mr. Liu, citing the mark No. 15911982 for "4.png" filed on December 11, 2014 and was already approved for registration.  BULGARI then found that a highly similar snakehead trademark had been approved for registration over goods "bags" in Class 18.  BULGARI immediately filed an invalidation application against mark No. 15911982 under Mr. Liu's name in July 2018, and actively defended the invalidation against their No. 21553865 trademark.

    The invalidation action against the mark No. 15911982 is not easy.  BULGARI has an international registration with an earlier priority date, but the extension of protection of this international registration in China has not been approved.  The national trademark was filed later than the application date of the disputed mark.  Thus, Articles 30 or 31 of the China Trademark Law cannot be adopted.  Finally, Kangxin trademark attorney turned to focus on the prior copyright over the snakehead device and prior use described under Article 32 of the China Trademark Law for this case.

    In the invalidation action stage, BULGARI submitted evidence that the snakehead trademark was prior used before the filing date of the disputed mark, but unfortunately, the examiner considered the evidence provided by BULGARI was insufficient, and did not support BULGARI's request.  BULGARI disagreed and appealed this case to the Beijing IP Court, and submitted supplementary evidence of copyright certificate of its catalogue in Italy in 2011.  In February of 2021, the Beijing IP Court made a judgment, holding that the work in question claimed by BULGARI is a snakehead figure, which has certain aesthetic significance and belong to an art work protected by China Copyright Law.  Secondly, the evidence can prove that BULGARI has been promoting the products with the art work in L'OFFICIEL, ELLE, Vogue, Bazaar and other magazines since 2011, along with the sales records of BULGARI on the products with the art work in 2013, it can prove that BULGARI has legally enjoyed the copyright of the art work involved in the case or is an interested party of the art work involved in the case before the application date of the disputed trademark.  Thirdly, the evidence can prove that BULGARI publicized and used the art work involved in the case on "bag" and other goods before the filing date of the dispute mark, and the third party stated that it had also operated on "bag" goods, there was overlap between the business scope of both parties, so the third party has the possibility of accessing the art work involved.  Finally, compared the dispute mark with the art work involved in the case, both of them are figures based on snakehead, and have similar overall appearance, visual effects, etc., they are substantial similar.  Therefore, the registration of the dispute trademark violates the provisions of Article 32 of the 2014 China Trademark Law.

    Mr. Liu disagreed and appealed to the Beijing Higher People's Court, which made an administrative judgment in August of 2022, rejected Mr. Liu's appeal and upheld the original judgment.  In September of 2022, the CNIPA made a decision on the invalidation action, declaring the trademark No. 15911982 invalid.

    As for the invalidation action against BULGARI's trademark No. 21553865 filed by Mr. Liu at the beginning, the trademark is still in the examination of invalidation.  Since Mr. Liu has lost the prior trademark right of No. 15911982 trademark, his invalidation against BULGARI's trademark will not be supported by the CNIPA.

    For this case, the trademark attorney would like to provided the following suggestions.  First, maintaining proper evidence, such as the materials for creating copyrighted work and the copyright certificate, etc, to show the ownership of the prior copyright is very important.  Second, we should conduct regular trademark monitoring after trademark application to avoid any party's bad faith filings by copying our brands.  For graphic trademarks, it was somewhat difficult to conduct trademark search and trademark monitoring in the past, however, recently Kangxin operated an online platform which offer a very easy way to search graphic trademarks with AI technology - we only need to upload the picture of the device  mark and click, and then the search results will display the similar marks.