Weekly China Trademark News Updates

August 17, 2021

1. The “BVLGARI and BVLGARI in Chinese” mark was recognized as a well-known mark

Bulgari S.P.A. (“Bulgari”) filed an invalidation request against Cai Qinghe’s trademark with reg. no. 6085778 (“Disputed Mark”) based on its prior trademark with reg. no. 3811212 “” in Class 14 and International trademark with reg. no. G761852 “” in Class 42.

Reg. No. 3811212             Reg. No. G761852

Upon hearing, the Beijing High Court found that the invalidation request was filed on April 2, 2017, more than five years after the Disputed Mark’s registration date (November 6, 2011). Therefore, Bulgari’s invalidation request based on Article 28 and Article 31 of the Chinese Trademark Law 2001 (“TM Law 2001”) shall be rejected. However, combined with the journals and magazines submitted by Bulgari and various media reports on Bulgari regarding its “BVLGARI and BVLGARI in Chinese” brand jewelries and watches, national library search reports, award certificates and materials, introduction to the distribution of Bulgari specialty stores, and the lease contract of its China retail stores, lease contracts and photos of its China franchised stores and watch counters, sales invoices and bank card slips, records of administrative and judicial protection of the “BVLGARI and BVLGARI in Chinese” trademark, and other evidence can prove that Bulgari has carried out long-term and continuous promotion and sales of its “BVLGARI and BVLGARI in Chinese” jewelries and watch products in China. Bulgari had obtained a wide range of publicity and high sales income. Based on the foregoing, it can be determined that the “” mark in Class 14 with reg. no. 3811212 had obtained a great reputation and influence on the “decoration (jewelry); watch” related goods and had been widely known to the public, which constituted as a well-known trademark under Article 13 Paragraph 2 of the TM Law 2001. The Beijing High Court concluded that the Disputed Mark’s registration may improperly took advantage of Bulgari’s well-known trademark’s market reputation and damaged its rights, which violated Article 13 Paragraph 2 of the TM Law 2001.

2. Dr. Martens’ “Marten Boots in Chinese” was found to be lack of distinctiveness

Dr. Martens International Trading GmbH is the owner of the well-known footwear brand “Dr. Martens.” Its Chinese trademark “Marten boots in Chinese” in Class 26 was rejected by the CNIPA citing the mark directly referred to the function and purpose of the goods. After the first and second instances, both the Beijing Intellectual Property Court and the Beijing High Court found that “Marten boots” is a type of leather shoes, and when such mark was use on “shoelaces” and related goods in Class 26 directly indicated the function and purpose of the goods. Such use was difficult to distinguish the mark and the source of goods based on the relevant consumer’s knowledge. Moreover, Dr. Martens did not submit sufficient evidence to prove that the “Marten Boots in Chinese” mark had obtained distinctiveness through its use (Beijing East IP’s search of the prosecution history of “Marten Boots in Chinese” revealed that the mark in Classes 25 and 35 was also rejected based on the same reasoning).

3. Beijing Municipal Intellectual Property Office solicits public opinions on the “Beijing Intellectual Property Rights Protection Regulations (Draft for Public Comment)“

The Beijing Municipal Intellectual Property Office issued the “Beijing Intellectual Property Rights Protection Regulations (Draft for Public Comment)” (“Regulation”) to solicit public opinions. The Regulation is divided into general provisions, administrative and judicial protection, coordinated protection, promotion and service, mediation of multiple disputes, liabilities, and supplementary provisions, with a total of 7 chapters and 60 articles. The Regulation aims to further strengthen the comprehensive protection mechanism of intellectual property rights through local legislation, improve the comprehensive protection system of intellectual property rights, strengthen the construction of various protection systems, and enhance the system protection capabilities of strict protection, incentives, creation, and promotion of application. Follow the concept of strengthened intellectual property protection is protecting innovation and provide better legal protection for the capital’s high quality innovation developments.

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