Recent invalidation proceedings before the Supreme Court have shown that evidence submitted at the retrial stage can be taken into consideration.

Facts

The contested trademark (3150675, depicted below), designating clothing, swimming suits and layettes (among other things), was filed on April 18 2002 and registered on October 28 2003.

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It was then transferred twice and its current owner is France Crocodilian Shirt Group Limited, a company registered in Hong Kong.

On October 23 2007 Lacoste filed an application for invalidation of the contested trademark before the Trademark Review and Adjudication Board (TRAB), based on Article 28 (similarity), Article 13(2) (registered well-known trademark) and Article 41 (fraud or other unfair means) of the Trademark Law. On May 10 2010 the TRAB ruled that the registration of the contested trademark should be cancelled for clothing, shoes and leather belts, but that it should be maintained for swimming suits and layettes. The TRAB agreed that the contested trademark was visually similar to Lacoste's cited trademark (depicted below), but considered that swimming suits and layettes were not similar to the designated goods covered by the cited trademark.

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Both Crocodilian and Lacoste were dissatisfied with the TRAB's decision and the case was brought before the Beijing First Intermediate People's Court for judicial review. The intermediate court maintained the TRAB decision in the first instance in 2010 and the Beijing Higher People's Court maintained the intermediate court's judgment in the second instance in 2011.

Lacoste submitted the case to the Supreme Court for final review and in December 2011 the Supreme Court decided to retry the case.

Lacoste submitted five additional pieces of evidence when applying for retrial:

  • the 10th edition of the Classification of Similar Goods and Services;
  • an administrative judgment of the Beijing First Intermediate People's Court proving that swimming suits and layettes and clothing have been recognised to be similar;
  • an administrative penalty decision issued by the Chizhou Administration for Industry and Commerce (AIC);
  • an administrative penalty decision issued by the Quanzhou AIC; and
  • various documents showing the actual use of the contested trademark.

According to Lacoste, this evidence proved Crocodilian's bad faith, as it had transformed the trademark through use and made it more similar to Lacoste's crocodile device registrations.

During the retrial, Lacoste also submitted a 1994 decision issued by the China Trademark Office in opposition proceedings against the trademark EXING ((1994) Shang Biao Yi Zi 368) to prove that Lacoste's cited trademark had been well known since 1994.

Decision

On December 8 2014 the Supreme Court overturned the judgments of the two lower instances and the TRAB decision, and ordered the TRAB to issue a new decision. The Supreme Court confirmed that the remaining goods (swimming suits and layettes) should be considered similar to clothing, especially considering the great market recognition and influence of Lacoste's device trademark and the bad faith of Crocodilian Shirt Group.

China's trademark classification system, the Classification of Similar Goods and Services, underwent an overhaul in 2012. It rectified some inconsistencies, such as swimming suits and layettes and clothing not being similar. The target consumers, functions and sales channels of those goods are indeed closely connected and, at the same time, many cases proved that the old classification caused problems of infringement in the market. Although the Supreme Court did not comment directly on this new classification, it showed a positive attitude by admitting that the evidence submitted by Lacoste at the retrial stage could be taken into consideration, and the 2012 classification presumably played an important role in this case.

The other supplementary evidence filed in the retrial procedure was admitted by the Supreme Court as corroborative evidence, which contributed to a favourable judgment for Lacoste. Notably, the recognition of the 1994 decision (Shang Biao Yi Zi 368) moved the date on which Lacoste's cited trademark was judicially recognised as well known up to 1994. This will have a positive effect on future cases involving Lacoste. In this regard, brand owners are encouraged to file decisive new evidence at any stage of the judicial review procedure.

For further information on this topic please contact Yongjian Lei at Wan Hui Da Law Firm & Intellectual Property Agency by telephone (+86 10 6892 1000) or email (leiyongjian@wanhuida.com). The Wan Hui Da Intellectual Property Agency website can be accessed at www.wanhuida.com.

This article was first published by the International Law Office, a premium online legal update service for major companies and law firms worldwide. Register for a free subscription.