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.

The details of the opposed mark is as below:

Process

    We filed opposition action against the opposed mark on December 17, 2015.  In the opposition, we mainly argued that:

1) The registration of the opposed mark damages the prior name right of the shoe designer, Mr. Jimmy Choo.  According to Article 32 of the Trademark 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 registration of the opposed mark violates the Principle of Good Faith, the registration and use of the opposed marks may cause negative influence.  In line with the Articles 7 and 10.1.8 of the China Trademark Law, the opposed mark shall not be approved for registration.

    On March 13, 2017, the CTMO issued the decision: The evidence submitted by the opponent, including online search results, brand introduction and media reports, can prove: “Jimmy Choo” is the name of opponent’s founder, and he, as a shoe designer, enjoyed certain reputation in the field of fashion products before the opposed mark’s filing date.  The opposed party has the possibility to know the famous shoes designer “Jimmy Choo” in public way.  The opposed mark is same with the designer’s name, thus, the relevant public may think that there is relationship between the opposed mark and its goods with the famous shoes designer, Jimmy Choo.  Consequently, the opposed mark damages the designer’s name right. 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. 

    Other than the opposed mark, the defendant also filed for a trademark registration, which is the same as the other parties’ earlier famous mark with respect to word or device, and the opposed party was not able to provide a reasonable explanation in response.  Therefore, the 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 media reports 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 to indirectly prove Mr. Jimmy Choo’s reputation.  The opposed mark is the same as Mr. Jimmy Choo’s name, and Mr. Jimmy Choo enjoys high reputation, thus, the opposed mark’s registration may mislead the public that there is association between the opposed mark and Mr. Jimmy Choo, which consequently damages Mr. Jimmy Choo’s name right.