We, Kangxin Partners, P.C., filed an invalidation action against the trademark,
(No. 66739212 in Class 25)
("the disputed mark") on behalf of MANIFATTURA VALCISMON
S.P.A. ("client") on January 31, 2024. The National
Intellectual Property Administration, PRC ("CNIPA")
examined the case and decided to invalidate the disputed trademark
for registration.
Background
The client is a globally renowned clothing brand, and registered
their trademarks "CASTELLI" and 
in mainland China over clothing products in
Class 25. The client was of the opinion that the disputed trademark
is a "similar mark over similar goods" compared with
their prior registered trademarks. We were entrusted to file
invalidation against this trademark.
The comparison of the trademarks is as below:
Key Issues
In the invalidation, we mainly argued that:
1) The disputed trademark and the cited trademarks constitute the "similar marks over the similar goods", in violation of Article 30 of China Trademark Law.
2) The registration of the disputed trademark damages the prior copyright of the applicant. According to Article 32 of China Trademark Law, the disputed trademark should be invalided.
3) The disputed trademark was filed in obvious bad faith by imitating the cited trademarks, which violates the principle of good faith.
On January 22, 2025, the CNIPA issued the decision to support the case, reasoning that the scorpion device of the disputed trademark is considered similar to the cited trademarks with respect to the composed elements and the visual effect. The designated goods of the disputed trademark and the cited trademarks are also similar. The coexistence of the two trademarks will cause confusion and misleading to the relevant public. Therefore, the disputed trademark and the cited trademarks constitute the "similar marks over the similar goods", in violation of Article 30 of China Trademark Law.
Inspiration of the Case
We previously filled an opposition action against this trademark, but the CNIPA did not support our claims during the opposition proceeding, as they do not consider the trademarks are similar visually.
The key point of this case lies in whether the trademarks are similar. We believe that both trademarks are mainly composed of scorpion graphics, with a large proportion. We argued from various aspects the similarity of the scorpion graphics, including the overall elements of a scorpion, the scorpion's pincers, the scorpion's eyes, and the scorpion's tail. Finally, the CNIPA supports our invalidation case.
From the decision, it is also clear that the examiner did not support our copyright claim, as they placed higher importance on the originality of the works and whether the two works constitute substantial similarity.
Conclusion
In the opposition/invalidation cases, if the opponent/applicant has an earlier trademark right, Article 30 will be much important in the opposition/invalidation cases. It is essential to conduct a comprehensive analysis of the similarity between the trademarks of both parties from various angles, particularly focusing on whether the additional descriptive words introduced by one party have a specific descriptive significance or any particular relevance to the applicant, and present strong evidence, such as prior similar precedents, materials showing the connections and high reputation of the cited marks to prove that they constitute "similar marks". If we could successfully convince the examiner that both parties' trademarks are similar, then we could win the cases. Even if our claims were not supported during the opposition proceeding, we still have the option to file a subsequent invalidation action. Losing an opposition case does not mean we will definitely lose a subsequent invalidation action. Each case must be evaluated on its own merits, as we have seen numerous instances where an opposition was unsuccessful but an invalidation action ultimately prevailed.
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.
