Key issues: The burden of proof for a well-known trademark may be lowered provided the trademark owner enjoys high fame and the applicant has obvious bad faith.
Salvatore Ferragamo S.P.A. (“Salvatore”) is the trademark owner of “Salvatore Ferragamo” (figurative form: Click here to view the image ) and “Ferragamo” (figurative form: Click here to view the image), both enjoying high fame and reputation worldwide in the luxury fashion industry.
A Chinese company (“the Company”) registered the mark Click here to view the image No.9372234 (“the Mark”) covering lighting apparatus and other goods in class 11 on May 7, 2012, and it also registered the mark Click here to view the image No.7665968 for the same goods on April 14, 2011. This mark is identical with the Chinese mark and name of Salvatore.
Salvatore filed a trademark dispute (now “invalidation action”) before the Trademark Review and Adjudication Board (“TRAB”) on the grounds that the Mark constituted a willful copy and imitation of their well-known mark in bad faith.
The TRAB, by ruling that the evidence filed by Salvatore was sufficient to prove their mark “Ferragamo” had been extensively publicized and reported by various media before the filing date of the Mark, and hence become known to public, recognized the applicant’s mark “Click here to view the image” under International Reg. No.668383 as a well-known mark for “clothing” in class 25. It further ruled that the Mark was almost identical with Salvatore’s well-known mark in terms of lettering and overall visual effect, and target consumers of “clothing”, as popular consumer products, would overlap with those of cooking apparatus and other products designated by the Mark. Further, the Company also applied for the identical Chinese mark “菲拉格慕”. Given all the facts, the registration of the Mark would mislead relevant public and damage the applicant’s rights. The Mark had thus constituted a willful copy and imitation of the applicant’s well-known mark, the registration of which, according to Article 13.2 of the old Trademark Law of China, should be cancelled.
King & Wood Mallesons represented Salvatore in the dispute.
Compared with domestic brands, it is more difficult for a foreign trademark to be recognized as well-known in China, especially when it comes to the issue of evidence. In this case, Salvatore’s evidences focus on the commercial advertisement of the mark on various media since 1995, evidence showing the advertising expenditures and decisions made by the China Trademark Office and the TRAB recognizing the fame and distinctiveness of Salvatore’s marks, all involving a long term and a large range. Plus the bad faith of the Company, the burden of proof for the well-known mark may be relieved to some extent by TRAB when making its decision. Another breakthrough is TRAB’s recognizing of the connection between goods crossing classes 25 and 11 based on overlapping target consumers, which is also encouraging for well-known trademark holders.