COCCINELLE S.P.A. (the Opponent) is an Italian company operating in the business of fashion and accessories and it is the owner of the trademark COCCINELLE. Coccinelle brand was established in 1978 in Parma, Italy, where the headquarters of the company are still located. The trademark is registered in several countries and in China in class 18 and other classes via Madrid System.
The trademark application No. 9704155 for "COCCI" was filed by Shenzhen Yingshang Fashion Co. Ltd. on July 11, 2011. The Chinese Trademark Office concluded the examination and preliminary approved the trademark "COCCI" having found no obstacles to the registration, despite the fact that the trademark COCCINELLE was already registered by the Italian company.
The Opponent owner of the prior similar mark filed an opposition against the trademark No. 9704155 for "COCCI" judging it too similar to its mark. Unfortunately CTMO found that the opposition filed by COCCINELLE was not sustainable and rejected it, confirming once again that the trademark COCCI shall be allowed for registration due to it not being similar to COCCINELLE.
COCCINELLE S.P.A. was not satisfied with CMTO’s examination and appealed with TRAB on August 13, 2013. The main grounds for appeal were the following:
- the Opponent is a famous leather enterprise from Parma, Italy, leading in the design, production and sales of leather bags, leather shoes, clothing and other accessories;
- COCCINELLE trademark has been applied for prior international registrations with territorial extension protection in China and enjoys high reputation in the world as well as in China.
- the Opposed Trademark is similar with the Opponent’s International Registration No. 712798 for “COCCINELLE” mark, International Registration No. 593593 for “COCCINELLE” mark in the same class;
- The Trademark Applicant imitated the Opponent’s trademark and applied it in bad faith.
- The co-existence of the Opposed Trademark and the Cited trademarks will likely cause confusion among customers and infringes the Opponent’s interests.
The Trademark Applicant failed to make a response within the time limit given. According to TRAB examination, the Opposed Trademark was applied by the Trademark Applicant on July 11, 2011 in Class 18. The Cited Trademarks were applied with territorial extension protection in China and both designated in the Class 18 in prior date.
The focus question therefore is whether the Opposed Trademark and the Cited Trademarks shall be regarded as similar trademarks on identical or similar goods.
The TRAB held that - in accordance with Article 30, 35 of current Trademark Law and Article 33.1 of the unrevised Trademark Law “the Opposed Trademark consists of English letters of “COCCI” in standard font. The two Cited Trademarks both consist of English letters of “COCCINELLE”. The Opposed Trademark is similar to the Cited Trademarks in terms of word component and whole appearance. The goods of “wallet, etc.” designated under the Opposed Trademark are identical or similar to the goods of “wallet, leather and imitation leather, etc.” designated under the Cited Trademark 1 and 2. Thus the co-existence of the Opposed Trademark and the Cited trademarks will likely cause original confusion among the customers. Therefore, the Opposed Trademark constitutes similar trademark with the Cited Trademarks used on similar goods according to the Article 30 of the revised Trademark Law”.
We welcome such decision from TRAB. We believe it is fair and correct in application of the examination guideline which states that there is similarity if the opposed trademark is wholly contained in the prior trademark. The decision surely denotes a more sophisticated approach to judging the similarity among goods to which we were not used in the past. Therefore confirms a good trend initiated from TRAB in recent times, anyway unfortunately, such principle of interpretation is not explicitly and clearly enunciated in the decision from TRAB.
HFG has represented COCCINELLE SPA in this case.
Decision on Opposition Appeal against Trademark Application No. 9704155 for "COCCI", Shang-Ping-Zi  No.0000084184 - COCCINELLE S.P.A. vs. Shenzhen Yingshang Fashion Co, Ltd.