After about four years' fight, Italian luxury brand Bulgari defeated the Chinese individual squatter in the invalidation litigation case against the preemptive registration in China.

On August 03, 2021, the Beijing High People's Court affirmed the original judgment of the Beijing Intellectual Property Court, overruling the disputed decision made by the China National Intellectual Property Administration (CNIPA) and decided the disputed trademark reg. No. no. 6085778 1104362a.jpg should be canceled for registration.

In this case, Bulgari lodged the invalidation against the disputed trademark when it has been in registration for more than five years, by requesting for well-known trademark protection over its registered trademark Reg. No. 3811212 "1104362b.jpg" (hereinafter referred to as "the cited mark"). Cai Qing He, as the registrant, argued the disputed trademark should be maintained. To support his allegations, he submitted proofs showing the use of the attacked trademark on the services relating to the operation of the music café adopting the name "BAO GE LI music café" (BULGARI music café in Chinese) and confronted the subject trademark had been in continuous use and obtained certain reputation. He further convinced the previous Trademark Review and Adjudication Board (TRAB) into deciding before the filing date of the disputed trademark, Bulgari's cited trademark hadn't become well-known yet, and since the invalidation was initiated five years after registration of the subject trademark, Bulgari's claims for well-known trademark protection cross class hadn't been justified.

The Beijing IP Court held that the proved first sale of Bulgari's jewel started in 2005 in mainland China, while considering before this time, there were a great number of reports over the cited trademark and the fact that Bulgari had started operations in the Chinese market with high amount of revenues in 2006 and 2007, it can be decided the cited trademark had become well-known among the Chinese consuming public before the filing date of the disputed trademark. The disputed trademark has the prominent Chinese wording identical with the strongly distinctive Chinese wording of the cited trademark, and the word part "BALCARY" is similar with the prior wording "BVLGARI". High degree of similarities of the compared marks cannot be explained as a coincidence. The IP Court determined his bad faith in registering the subject trademark and the invalidation request could be filed despite of the five years' limitation. The designated services such as "café; bar services" of the subject trademark and the goods "jewelry; watches" of the cited mark have the same targeting group, and both are common goods and services. Being used on the services like "café; bar services", the disputed trademark would readily lead the related consumers to connect it with the cited mark of Bulgari and unduly utilize the good fame of the cited mark built by Bulgari in the durable operation, damaging Bulgari's interest. Therefore, the disputed trademark has contravened with the relevant provisions of article 13 (2) of 2001 China Trademark Law and the disputed decision should be rectified.

The Beijing High People's Court affirmed the original judgment in reiterating that, when applying the well-known trademark protection clause, the factors 1) strength of the cited mark; 2) degree of similarity of the compared marks; 3) usage of the designated goods; 4) the target consumers and degree of care when purchasing is made; 5) other entity's use of the marks similar with the cited mark or other relevant factors should be comprehensively considered. The evidence of Bulgari well proves, before the filing date of the disputed trademark, Bulgari had been durably and widely selling and advertising the jewelries and watches under the cited mark in mainland China which had extended to wide geographic area and obtained high revenues. The Court thereby rules, the cited trademark had become well-known with wide influence and good fame in mainland China on the goods "jewelry; watches". As a copy and imitation of the cited mark, the disputed trademark would easily cause consumers to falsely connect it with the cited mark and impair the cited mark's distinctiveness, registration and use of which would wrongly take advantage of Bulgari's established reputation in the market. The registrant's evidence showing the use of the subject trademark in his music café is not cogent to prove the disputed trademark had become reputable enough to be distinguished by the consumers. Besides the High Court determined, the other infringing trademarks filed afterwards by CAI Qing He has showed his bad faith.

Author's Insights

If a trademark has been in registration for more than five years, to successfully attack it before the Chinese competent authorities, two requirements should be met, first is the prior trademark claimed for protection should be well-known before the filing date of the disputed trademark, and the second is, the registrant of the attacked trademark has bad faith. In the present case, the Courts of both instances determined the bad faith of the registrant to file the disputed trademark and other infringing trademarks afterwards. In the administrative procedures before the CNIPA, most decisions are made rigidly to compare similarities of marks and goods/services, while the judicial authorities are more willing to pursue realization of substantive justice in each case. CAI Qing He as the registrant of the subject trademark lodged invalidation proceedings based on the subject trademark against the trademarks of Bulgari with the aim to prevent usage of the trademarks in hotel services that are important business of Bulgari in mainland China and all over the world. This case has timely attacked the squatter's root for taking any legal actions against Bulgari's hotel services related trademarks, and well protected the real brand owner's interest. It shows the Chinese courts' firm attitude to crack down the bad faith players in the market.

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