Furla is an Italian brand born in 1927 from the creative mind of Aldo and Margherita Furlanetto. The brand's beginning was eventually to grow into a world-renowned leather-goods brand.
In 1955, Aldo opened the first Furla store on Via Ugo Bassi in the heart of Bologna.
Later, when the shop was passed to his children, the first collection of bags marked with the Furla logo was launched bringing the brand to have a skyrocketing growth.
The brand expanded to the point to cover no less than 63 foreign markets from Europe to Asia and the United States, with 5 subsidiaries, 319 single-brand Furla boutiques positioned on the most important international shopping streets and 1,290 sales outlets from shops to department stores.
In late 2008 the company also inaugurated its pan-European web boutique and an international expansion plan that saw the opening of major flagship stores in Rome, London, Hong Kong, and Beijing.
Regarding the Chinese market and IP protection, FURLA S.P.A. since 2012 widely protected its own brand registering the trademark FURLA, in Latin characters, and its Chinese transliteration "芙拉" in many classes such as 18, 25, 35 which are the main ones for fashion brands.
In 2021, "FURLA S.P.A." filed some opposition actions against the published marks, "CHRISFURLA" (No. 46736281, Class 18), "付拉" (FULA No. 47654332, Class 25) and "凯芙拉" (KAIFULA No. 38674099, Class 18).
The arguments used by Furla focused mainly on the fact that the opposed marks constitute "similar marks over similar goods" compared to the opponent's cited marks, "FURLA" and/or "芙拉". Also, the trademarks "FURLA" and/or "芙拉" have acquired high reputation in China; and that those two trademarks have established sole relationship through long-term and extensive use and promotion.
At the beginning of 2022, the CNIPA supported Furla argumentations and decided to recognize the well- known trademark status of "FURLA / 芙拉" and rejected the opposed marks.
Finally, the CNIPA held that registration and use of the aforementioned marks will damage the business interests of FURLA / 芙拉, which have acquired a high reputation amongst Chinese consumers.
What is a well-known trademark?
Well-known trademark status means that the mark has acquired high reputation and influence among the public through extensive and continuous use. This is based on a broader scope of protection that is given on a case-by-case basis.
The protection for a well-known mark does not only consider the goods/services of that specific business scope but it could be extended to non-similar goods and services.
However, the extension of the protection scope can also depend on the degree of the well-known status as well as the distinctiveness of the mark.
How to achieve this status?
Brand owners should have their trademark registered in China for at least two years prior to the filing date of the opposed or canceled mark.
Usually, a well-known mark should be used in China for at least five years prior to the filing date of the opposed or canceled mark.
The similarity between the subject mark and the opposed mark should be high.
The designated goods/services of the two parties should be "dissimilar" according to the Chinese Classifications but have related so that the opposed trademark can "mislead" the public.
Also, brands and clients need to provide evidence. Evidence is an important step in order to achieve this status. Evidence of brands trademark in China determines the use and reputation of the mark in the territory.
Indeed, great value is to regularly maintain and categorized the evidence database by the trademark attorney for the brand owner.
The recognition of well-known trademark is on a case-by-case basis, it is possible that one mark is recognized as well-known mark in one case but fails in another. The reason why this happen is due merely to situation when the filing date of the opposed/disputed mark is different and therefore the period of required use evidence is different, or the connection between goods and services is different or the similarity between trademarks.
In general, it is better for the brand owner to base the opposition action also on other grounds such as bad faith, unfair competition etc. and not only claiming the well-known status.
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.