Regarding the dispute over the No. 31710369 figure trademark(trademark in dispute), Beijing High People's Court recently made the final judgment, rejecting the Italy-based Dama S.P.A.'s (Dama) application for an extension of a registered trademark to a new one on goods including garments, shoes and socks.
On June 20, 2018, Dama submitted an application to register the trademark in dispute, requesting certified to be used on Class 25 products including chasubles, sashes for wear, garments, shoes and socks.
After examination, the Trademark Office (TMO) under the former State Administration for Industry and Commerce held that the trademark in dispute is similar to others' prior registered trademarks while being used on the same or similar goods, disapproving the registration of the trademark in dispute.
Dama was unsatisfied with the decision and then lodged a review request to the Trademark Review and Adjudication Board (TRAB) under the former State Administration for Industry and Commerce in December 2018, by submitting exhibits including registration information of the relevant trademarks owned by Dama, documents proving the use of the trademark in dispute in multiple countries, certificates of copyright registration of work, documents proving the firm's reputation, but would only suffer another disappointment. China National Intellectual Property Administration (CNIPA), which inherited all the missions of the TRAB, upheld the TMO decision. Unwilling to move on, Dama brought the case to Beijing IP Court.
Dama claimed although its trademark in dispute is similar to others' prior trademarks, the disputed trademark, as a simplification of its own prior reputable trademark, can be distinguished from other trademarks without causing confusion among the public and should be approved for registration. Beijing IP Court, however, did not buy Dama's claim, holding that trademark registrants own trademarks independent from each other. The trademarks registered (or attempted for registration) in succession may not automatically have the extension connection.
Disgruntled with the first-instance judgment, Dama then appealed to Beijing High People's Court.
Beijing High echoed the reasoning of the lower court and further stressed extension registration of new trademarks should not bend the established rules of trademark registration, particularly, such extension should not induce the new trademark being the same or similar to prior registered trademarks owned by others used on the same or similar classes of goods. In this connection, Beijing High upheld the first-instance judgment and denied Dama's appeal.(by Wang Jing)
（Editor Dou Yike）
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