CNIPA ruled that the trademark No. 30195179 
in Class 17, No. 30208214 
in Class 19 and No. 
in Class 35 should not be approved for
registration as requested by Giacomini S.p.A.
With assistance of the legal team of Giacomini S.p.A. ("Giacomini") and their Italian legal counsels, CCPIT Patent and Trademark Law office represented Giacomini as the appellant in the appeal case Giacomini vs. CNIPA, with Giacomini (Hangzhou) Pipe Co., Ltd ("GHP") as the third party, regarding the administrative litigation of the invalidation action against trademark "嘉科米尼GIACOMINI". The Beijing High People's Court has rendered the decision of second instance recently, which decides to cancel the decision of the first instance made by the Beijing Intellectual Property Court and the decision of invalidation action made by the Trademark Review and Adjudication Board (TRAB, presently CNIPA). The final decision of this case finds the disputed mark has constituted the situations prescribed in Article 31 of the 2001 Trademark Law, namely, the disputed mark is a mark filed with the intent of registering other's prior mark with certain reputation, and it should be announced as invalid.
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| The disputed mark | The cited mark |
The Italian company Giacomini produces and sells components and systems for the distribution of heating, air conditioning and sanitary water for use in the residential, industrial and tertiary sectors. Founded in 1951 in San Maurizio d'Opaglio, Novara, Italy, Giacomini today has a turnover of 200 million euros, of which over 80% on foreign markets, 3 Italian production plants, 19 international organizations (including branches, partners and offices representative office). Giacomini entered the Chinese market in 2000, reaching a turnover of around 8 million euros in recent years. In 2015 and 2016 Giacomini was awarded the prestigious Panda D'Oro recognition as the Italian company with the greatest growth on the Chinese market for over 10 years and in 2017 the equally prestigious Green China award. Giacomini's investments made to date in China amount to over 20 million euros and will reach 30 million euros by 2021.
Giacomini is the owner of the trademarks GIACOMINI, 
, 嘉科米尼 and 
etc..
https://www.giacomini.com/en/products/multilayer-and-plastic-pipes
In the recent trademark opposition proceedings filed against GHP's following trademark applications for "GIACOMINI嘉科米尼", the CNIPA ruled that the GHP's applications for the below trademarks "GIACOMINI嘉科米尼" should not be approved for registration.
CNIPA held, in the decisions on the trademark oppositions, that: "in view of the fact that the opposing party's cited mark is a imaginary word with no meaning, which carries strong distinctiveness, it is hardly a coincidence that the opposed party applied for registration the disputed mark which is identical with or similar to the trademark of the opposing party. Therefore, the opposed party had the intention of copying the opposing party's prior mark and has disrupted the order of trademark registration and damaged the order of fair competition." and "in addition to the opposed trademark, the opposed party has also filed multiple trademarks identical with or similar to the cited trademarks of the opposing party. The trademark of the opposing party has certain originality, it is hardly a coincidence that the opposed party applied for registration the disputed mark which is identical with or similar to the trademark of the opposing party.
Therefore, the opposed party had the intention of copying the opposing party's prior mark and has disrupted the order of trademark registration and damaged the order of fair competition." As a result, the above trademark applications have been refused by CNIPA.
With the favorable decisions from CNIPA on the opposition proceedings, Giacomini trusts that they will have sustained support from the Chinese courts and law enforcement authorities in their fight against trademark filings and use in bad faith, and they will be in the position to fully protect their IP rights as well as their business partners and Chinese consumers in the future.
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