Louis Vuitton Malletier (LV) had been having a four-year-long rift over No.9291725trademark "唯依and its figure" (trademark in dispute) with She Yang Xin'ante Wire &Cable Factory based in Yancheng, Jiangsu.
Recently, Beijing High People's Court made the judgment, holding that although the classes of products certified by the trademark in dispute and the LV trademark were not the same or similar, the LV trademark had enjoyed high popularity on suitcases and bags, and qualified as a well- known mark prior to the registration date of the trademark in dispute. The confusion and misunderstanding among the public had generated by the trademark in dispute. Beijing High revoked the TRAB (Trademark Adjudication and Review Board) decision favoring the trademark in dispute and ordered it to take a de novo look at the case.
In April 2011, Xin'ante filed the registration application for the trademark in dispute to the Trademark Office(TMO) and was approved to be use on the products of Class9, wires and cables in May2012.In December 2015, LV lodged an in-validation request, claiming that the trademark in dispute had constituted similarity on similar products with itsNo.749782 trademark LV (cited I trade-mark) and copy and imitation of No.241081 trademark LV (cited II trademark), causing confusion among consumers after registration and use of the trademark in dispute. Meanwhile, LV requested the TRAB to determine cited II trademark to be a well-known mark, and submitted relevant evidence. As shown on sbj.cnipa.gov.cn, cited I was approved to be used on the products of Class9in December2000while cited II was filed by LV in Febru-ary1985, and would be approved to be used on the products of Class18.
The TRAB made the decision to up-hold the registration of the trademark in dispute. LV brought the case to Beijing IP Court. Beijing IP Court revoked TRAB's decision and remanded the case. TRAB appealed to Beijing High People's Court.
After hearing, Beijing High held that the evidence produced by LV could prove the cited II had launched continuous and wide promotion and use before the registration date of the trademark in dispute, achieving high popularity, and under protection as the well-known mark. Therefore, the court determined the cited II to be the well-known trademark certified on the products of wallets. Meanwhile, Beijing High held that the trademark in dispute was formed by the words "LV" and Chinese characters "唯依", and the cited II was formed by "LV". The words "LV" took up a high proportion, constituting distinctive recognition, and the form of "LV" and its combination were similar with the cited II, rendering the highly similarity on the overall look and visional effect. Hence, the trade-mark in dispute constituted the copy and imitation of cited II as a whole.
At this connection, Beijing High rejected the appeal from the TRAB, and upheld the first-instance ruling.
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