The Supreme People’s Court of China has recently made a judgment on the retrial case concerning the trademark Reg. No. 3158776 Click here to view mark (disputed mark), with Brooks Brothers Group, Inc. (Brooks Brothers) vs. Whisey Bens Fashion Control Limited (Whisey Bens). According to the judgment, the Supreme People’s Court finally supported Brooks Brothers’ retrial request, revoked the judgments made by the courts of the first and second instance and made a motion to dismiss plaintiff for lack of standing.

Brooks Brothers was founded in 1818. To this day, Brooks Brothers is one of the oldest and most reputed apparel brands in United States of America. Brooks Brothers has adopted “Golden Fleece logo” as its symbol for “Brooks Brothers” since 1850 and entered into the Chinese market since 2000.

On April 25, 2002, a Chinese individual, YUAN Kuaiyin, filed the trademark Click here to view mark, which was approved for registration under Reg. No. 3158776 on Dec. 21, 2003 on the goods “clothing, shoes, hosiery, hat, neckties, leather belt[clothing], gloves [clothing], layettes [clothing], scarves, bathing suits” in class 25. The said mark registration was later approved to be assigned to Whisey Bens.

Within the specified time period, Retail Brand Alliance, Inc. (the predecessor of Brooks Brothers) filed an invalidation action against the disputed mark. Brooks Brothers asserted: the cited mark, Golden Fleece logo, had been used in mainland of China for years and had obtained a certain reputation; the disputed mark was similar to the cited mark and would cause consumers’ confusion and misrecognition as to the origin of goods. The TRAB decided to invalidate the disputed mark on the grounds that Whisey Bens was dissolved and had no right to register trademarks.

Whisey Bens then launched a lawsuit against the TRAB’s decision. Whisey Bens claimed that, the reason for its dissolution was just failing to pay the address fee and it operated normally; the TRAB’s invalidation of the mark was beyond its jurisdiction. Both the intermediate people's court and the high people's court dismissed the TRAB’s decision.

Against the unfavorable judgment made by the court of the second instance, the attorneys HU Gang and WU Hongxia of CCPIT comprehensively analyzed the relevant judicial issues and concluded that the judgments made by the courts of the first and second instance are devoid of factual and legal grounds and should be revoked. Therefore, Brooks Brothers carefully prepared substantial evidences with supports from Neil B. Friedman, Esq. of Baker and Rannells, PA in U.S.A. and Chris Hawkes at STOBBS in UK, and lodged the retrial request with the Supreme People’s Court.

Brooks Brothers mainly claimed as follows in the retrial:

  1. Prior to the filing of the disputed mark, Brooks Brothers’ trademarks “Brooks Brothers” and “Golden Fleece logo” had been used on goods like “clothing” in the Chinese market. Through wide use, these marks had enjoyed a certain reputation in mainland of China. The disputed mark is identical with or similar to Brooks Brothers’ prior used mark Click here to view mark of certain reputation. The registration of the disputed mark will cause confusion and misrecognition among consumers as to the origin of goods.
  2. This case concerns two Whisey Bens Fashion Control Limited, which are successively registered in UK. One is with registration number of 4668587 (587 company), incorporated in February 2003 and later dissolved in November 2004. The other is with registration number of 6611002 (002 company) and incorporated in June 2008. The trademark registrant is the 587 company, which was struck off the Companies Register and was dissolved in November 2004. The plaintiff (002 company) has a separate legal personality from the trademark registrant (587 company). These evidences as filed by Brooks Brothers can prove that the plaintiff (002 company) is not legally interested in the TRAB’s decision and thus is disqualified to institute the legal proceedings.

After examination, the Supreme People’s Court held:

  1. The certificates from the Companies Register in U.K. demonstrate that these two companies Whisey Bens Fashion Control Limited share the same company name, director name and company nature (share limited company), but are different in company registration numbers and registration dates.
  2. According to UK company law, 002 company and 587 company have independent legal personalities and do not fall into the situation of “restoration”.
  3. The plaintiff (002 company) neither is the party of the TRAB’s decision, nor submitted sufficient evidences to prove that it is legally interested in the said decision. Thus, the plaintiff (002 company) has no right to institute the legal proceedings.
  4. The judgments made by the courts of the first and second instance that Whisey Bens (002 company) has certain interests in specific facts of this lawsuit and is allowed to institute the legal proceedings are not based upon sufficient factual and legal grounds and shall be corrected.
  5. Since the lawsuit is rejected, there is no necessity to comment on other retrial requests.

The success in the retrial cases puts an end to the 8-year long invalidation against the disputed mark and finally has invalidated the registration of the disputed mark. The success effectively protects the extensive use of the mark Click here to view mark by Brooks Brothers on apparel-related products in China and strongly fights against the bad faith trademark preemption. Moreover, the significance of this case is that the Supreme People’s Court has sent a clear message on deterring such an unhealthy practice, namely that an individual deliberately registers a shell company in foreign countries and then preempts others’ reputed trademarks in China under the name of the foreign company in a vicious attempt to mislead the Chinese consumers.

This retrial is one of the most challenging cases that CCPIT Patent and Trademark Law Office has ever handled. This case will play a significant impact on the issue of “determination of a legally interested party” regarding the qualification of instituting administrative litigations in China in the future.