What should we concern: registered trademark, filed in the name of others without others’ authorisation should be deemed as “obtained through means of fraud” and should be announced invalid.

DELTASOFA’S S.R.L. (“DELTASOFA”) was established on September 19, 1985 by Vincenzo Liborio Calia, a skilled master carpenter in Europe who in 1965 started to design and produce sofas in south Italy and created the famous sofa brand “caliaitalia”. Nowadays the “caliaitalia” sofa products are sold in countries in North America, the Middle East and the Far East.

On August 1 2008, a Guangdong company filed a trademark application for the mark “caliaitalia” under No. 6875537 (hereinafter as “mark in dispute”) in the name of “Calia Italia S.p.A” (the former name of DELTASOFA”). In 2011, this Guandong company, again in the name of “Calia Italia S.p.A.”, signed the trademark assignment documents regarding the mark in dispute and had the mark assigned to its affiliated company.

In 2012, DELTASOFA filed a trademark dispute with the China Trademark Review and Adjudication Board (TRAB) against this No. 6875537 mark claiming that this mark was filed in guise of DELTASOFA with forged application documents.

While filing the dispute, DELTASOFA submitted notarized and legalized company declaration to prove that it never applied for nor authorized others to apply for the mark “caliaitalia”, and the mark in dispute was clearly filed by others in the name of DELTASOFA.  As such, the registration of the mark in dispute should be deemed as obtained through means of fraud. On the other hand, the current holder of the mark in dispute, namely company C, provided several pieces of evidences trying to prove that the mark in dispute was obtained through legitimate ways of application and assignment, which mainly include a copy of an authorization letter appearing to be issued from “Calia Italia S.p.A” to company A on July 15, 2009 authorizing company A to handle the trademark application and assignment matters regarding the mark in dispute and a copy of an assignment agreement between company A and company B (an affiliated company of company C) with the content about the assignment of the mark in dispute.

To challenge the authenticity of the evidences filed by company C, DELTASOFA further provided the evidences on three times of name changes in the company history, i.e. the company changed its name to “Calia Italia S.p.A.” from “Calia Salotti S.p.A.” on August 11, 2003, later changed to “CALIA S.R.L.” on July 29, 2008 and to “DELTASOFA’S.R.L.” on May 18, 2010, so as to prove that the company name used in the trademark application of the mark in dispute as well as the name used in the authorization letter provided by company C was different from DELTASOFA’s company name at that time. DELTASOFA also submitted to the TRAB the declaration made by the Italian notary on the requirements for Italian company signing of legal documents as set in Italian Civil Code and the relevant articles of Italian Civil Code  to show that the authorization letter provided by company C did not conform to such requirements and the company chop of DELTASOFA used on such documents were forged by others.

The TRAB rendered the Decision on Invalidation on November 28, 2014 with the case number “商评字[2014]No.0000092104” after examining this case. The TRAB held that the notarized and legalized name change proof submitted by DELTASOFA was able to prove that “Calia Italia S.p.A.”, in whose name the mark in dispute was filed, was the previous name of DELTASOFA ; and the notarized and legalized Declaration of the legal representative of DELTASOFA , the proof showing the requirements for signing of legal documents as set in Italian Civil Code and the Statement made by the public notary could further prove that the application of the mark in dispute was not the real intention of “Calia Italia S.p.A.”.  On the contrary, the registration of the mark in dispute was obtained by submitting forged application documents which fell under the situation of “gaining registration by means of fraud” as stipulated in article 44.1 of the current China Trademark Law. The TRAB also held that the authenticity of the authorization letter submitted by company C could be rebutted by the fact proved above, and thus the registration as well as the assignment of the mark in dispute was flawed.

Therefore, the TRAB announced the registration of the mark in dispute should be invalid.

King & Wood Mallesons is the trademark attorney representing DELTASOFA in this case.

Comments:

“Gaining registration by means of fraud” as stipulated in article 44.1 of the Trademark Law refers to the situation that the holder of the mark in dispute obtained the registration through fraud action, including hiding the truth from the trademark registration authority and filing forged application documents or other proof. In above the case, the adverse party filed and assigned the mark in dispute in the guise of DELTASOFA to make the application and assignment appear to be legitimate. However, the TRAB made it clear in the decision that applying for a mark in other’s name without other’s authorization accounts as acts of filing forged application documents and constitutes means of fraud.

One decisive factor in convincing the TRAB to announce the mark in dispute invalid is that DELTASOFA noticed the flaws of the evidences filed by the counterpart in terms of formality and content especially the inconsistency of the company name and challenged the authenticity of these evidences one by one.  Meanwhile, though there is direct evidence to prove that the trademark application documents were signed by others in the guise of DELTASOFA, the indirect evidences filed by DELTASOFA formed a strong evidence chain showing that the application and assignment of the mark in dispute were conducted by means of fraud.

Note: This article was originally written in Chinese, the English version is a translation.