On October 12, 2016, the Trademark Review and Adjudication Board (TRAB) made a decision in the case for Twin-Set Simona Barbieri S.p.A. (hereinafter the “Twin-Set”) (represented by HFG Law & Intellectual Property) vs. Etincelle Paris International Group Limited (hereinafter the “Etincelle”) (represented by China Trademark & Patent Law Office Co., Ltd.) in relation to the trademark “TWIN-SET SIMONA BARBIERI” filed by the latter in class 3 (perfumes and cosmetics) in June 2011.
The Twin-Set, an Italy company focusing on the fashion industry, has gained good popularity among customers for its innovative design and high quality of its products.
The Etincelle is a Hong-Kong company which appears not to have any operations in China or other countries except for possessing a rich trademark’s portfolio.
In November2015,the Twin-Set company came to know the existence of the above-mentioned trademark in class 3 and there by decided to challenge the registration by filing an invalidation action in front of TRAB against the trademark.
In the beginning, the TRAB did not support the opinion that the trademark at issue was a similar trademark designating similar goods since the trademark “TWIN-SET SIMONA BARBIERI” applied by the Italian company was later than the trademark filed by the Hong Kong company. The TRAB did not accept the claim that the trademark at issue had infringed the rights of the designer and the Italian company either.
However, considering the high similarity for the trademark at issue, and further considering the declarations made by the other injured party Alexander Wang stating that the registrant had infringed his intellectual property rights, TRAB tended to believe the bad faith of the registrant.
In addition, the TRAB in its decision highlighted that the registrant not only failed to submit evidence to prove that its true aim was to use the trademark, but also refused to provide any reasonable explanation on how they developed such a trademark.
Consequently, the TRAB concluded that the disputed trademark was in violation of Article 44.1 of the Trademark Law and thus cannot be maintained for registration. The application of Article 44.1 – trademark acquired by fraud or any other improper means - is quite unusual. Herein please find the provisions of the relevant part: “Article44 - Where a trademark registration violates the provisions of Articles 10, 11,and 12 of this Law, or the registration of a trademark was acquired by fraud or any other improper means, the Trademark Office shall invalidate the registration at issue. Any organization or individual may request that the Trademark Review and Adjudication Board make a ruling to invalidate such a registered trademark”.
If not dissatisfied with the decision, the Etincelle, the registrant of the invalidated trademark, can still appeal to the Beijing Intellectual Property Court within 30 days after the receipt of the decision. If the Etincelle chooses not to appeal, then the decision becomes final.
We believe that it is quite a big success to win this case and we are sincerely happy and proud to have assisted the Twin-Set company.