In May 2021 the Chinese Trademark Office (“CNIPA”) issued three favorable decisions in favor of Consorzio del Vino Brunello di Montalcino (“Consorzio”) granting the invalidations of the trademarks No. 19499293, No. 19478661 and No. 19480760 “Brunello di Montalcino” in classes 21, 18 and 35 on the ground of bad faith by the applicant.
Brunello di Montalcino is a prestigious Italian wine obtained from the vinification of a variety of Sangiovese vine called “Brunello”
Brunello di Montalcino has been granted the Protected Denomination of Origin in (“PDO” or “Doc” in Italian) in 1966 and furtherly in 1980 has been selected as the first Italian wine to obtain the Controlled and Guarantee Denomination of Origin (“DOCG”).
The DOCG is exclusively reserved to DOC wines from at least ten years, which are distinguished with particular quality, in relation to the intrinsic qualitative characteristics.
Going back to cases at issue, once aware of the presence of these trademarks in the Chinese Trademark Registry, the Consorzio appointed Studio Tonon - Lo Vetro & Partners and HFG Law & Intellectual Property for obtaining protection against the blatant squatting case.
On September 2, 2020, Consorzio, represented by its attorneys, filed the three invalidation actions against the trademarks No. 19478661, No. 19499293 and No. 19480760 owned by J.C. BOUTIQUE LIMITED.
The decisions were issued timely in only 8 months and are all favorable to the Consorzio. Reading through the decisions we can learn many important elements.
- Consorzio is the owner of a registered trademark granted for protection in China on the date prior to application date of disputed trademarks and designated on the goods of “wine” in Class 33.
- The disputed trademarks were applied in 2016 and the registration was granted in 2017.
- They all designate goods and services (class 18, 21 and 35) which are not similar to those designated under the prior trademark owned by Consorzio (class 33).
Considering that the registration date of disputed trademarks is earlier than November 1, 2019, according to the principle of non-retroactivity, the Trademark Law of 2013 shall apply to substantive issues of the present cases, and the Trademark Law of 2019 shall apply to procedural issues of the cases.
The decision recognize that Brunello di Montalcino enjoys certain reputation China due to use and advertising within the territory.
However, the goods designated under the disputed trademarks are not similar and not relevant to wine, therefore there is not likely hood to mislead the relevant public.
Thus, the registration and use of disputed trademarks is not a violation of Article 16.1 of Trademark Law which protects the Geographical Indications (See Note 1 for the all text of art. 16).
In a similar way the decisions exclude the violation of Article 32 of Trademark Law (Note 2) which provides that protection is granted to trademark that are in use and enjoy certain reputation, Article 10.1.7 of Trademark Law (Note 3) which prohibits the registration and use of trademark that mislead the public about the characteristics of the goods such as the quality or the place of origin; and Article 10.1.8 of Trademark Law refers to the trademark that is inherently detrimental to political system, religion, customs, etc.
However, as we said above, the three trademarks were declared invalid. Indeed, the Re-Examination Board of CNIPA recognized that the three trademarks filed by J.C. BOUTIQUE LIMITED all stand in violation of art. 44 of The Trademark Law (2013).
Let us read the words of the decision on this point.
“In this case, the evidence submitted by Applicant is sufficient to prove the reputation of “Brunello di Montalcino” on wines on the date prior to Application date of Disputed Trademark.
The identical trademark filed by Respondent could not be simply deemed as coincidence. The Respondent also filed large numbers of trademarks in Classes 9, 14, 18, 21, 25 and other classes, including “Oliver Peoples”, “TOMMASI”, “pradalupo”, “普拉达露波”, “Costa Rossa”, “FILIPPO GABRIELE”, “RICCARDO TISCI”, “di San Leonarda” that are similar to some famous brands or fashion designers.
However, Respondent failed to make explanation on these trademarks. Such behavior of Respondent cannot be recognized as justified behavior based on good faith.
Based on the above, the Office holds the aforesaid behavior is obviously beyond the normal production and operation needs, and take free ride on famous brands for improper interests, which violates the principle of good faith, disturbs the trademark administration order, and impairs the fair competition market.
The registration of Disputed Trademark has violated the Article 44.1 of Trademark Law of 2013.”
Note (1): Article 16. A trademark shall not be registered and its use shall be prohibited if it consists of or contains a geographical indication in respect of goods not originating in the region indicated, to such an extent as to mislead the public; however, registrations made in good faith shall continue to be valid. A geographical indication referred to in the preceding paragraph is a sign which indicates a good as originating in certain region, where a given quality, reputation or other characteristic of the good is essentially attributable to the natural or human factors of the region.
Note (2) Article 32. An application for registration of a trademark shall not be of such a nature as to infringe the existing earlier right of another person. An application shall not be made with intent to register a trademark which is used by another person and enjoys certain reputation.
Note (3) Article 10. The following signs shall not be used as trademarks: (7) those having the nature of fraud, being liable to mislead the public about the characteristics of the goods such as the quality or the place of origin; or (8) those detrimental to socialist morality or customs, or having other unhealthy influences.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.