Decision about Trademark No.12785892 “monliere” on Invalidation
Applicant: MONCLER S.P.A.
Agent: Beijing Kangxin IP Agent Ltd
Against Party : Guangzhou Yizi Garment Ltd
Address: Floor 2&3, Unit 2, No.83 Fenghekangle Nanxin Str, Haizhu Dist, Guangzhou, Guangdong province
The applicant applied for trademark invalidation on September 27, 2016 to the TRAB on the mark “” of No.12785892. After We (the board) received the application, in accordance with Article 6 of Trademark Examination Rules, a group had united to process the invalidation, now the examination is done.
Grounds of applicant: 1. Disputed trademark respectively similar with No.6084721 “”, Int No.978819 “MONCLER”, No.4486670 “”, Int No.991914“MONCLER +device”, No.1197643“MONCLER +device”(hereinafter referred to as cited mark 1, 2, 3, 4, 5) in identical or similar goods; 2. The applicant has decent reputation, and disputed mark damage his trade right; 3. Disputed mark is deceptive. It’s easy to cause misunderstanding by public; 4. The register of disputed mark violate the principle of honesty which will cause adverse social impact. In summary, the applicant request to cancel the disputed mark according to the Article 7, Article10 section1 (7)(8), Article 30, Article 32, Article 44 of Trademark Law.
The applicant submit following evidence (all are copies ):
1. Official website print pages;
2. Record of propaganda and media reports;
3. Details on shops in worldwide and part of the lease contracts;
4. Evidence of sale;
5. Evidence of trademark been protected;
6. Trademark register record;
7. Relative decision, judgement;
8. Verification letter issued by the Italian Embassy in China;
9. National Library Related Search;
10. Other relative evidence.
The against party haven’t reply within limit period.
After trial: 1. Disputed mark was applied in June 20, 2013, and registered in December 21, 2014, designed in class 25 around garment. Up to now, it’s a valid registered mark.
2. The date of cited mark 1, 2, 3, 4 are registered or access to China’s territorial extension protection earlier than the disputed mark get registered, designated in class 25 and still valid. Cited mark 5 registered later than disputed mark, so it can’t be a prior block.
We (the board) think that, the spirit of Article 7 in Trademark Law already reflected in specific terms, so we wouldn’t give a separate review on above content.
In this case, disputed mark be made up of pure English “monliere”, similar with cited mark 1, 2, 3, 4 in letter composition, calling, visual effect; They designated in identical or similar goods and have some kind of commonality in Sales channels, sales sites, consumer objects; Besides, all evidence show that cited marks already have a decent reputation, under this condition, the relevant public will misunderstand the source of goods. Based on Article 30 of Trademark Law, they are similar marks.
As mentioned by applicant, disputed mark damage his trade right, we think that, the English word of disputed mark different with his business name. It’s neither easy to connect the disputed mark with the applicant, nor damage his right. Therefore, there is no good reason to determine that the disputed trademark violates the applicant's prior trade right and thereby violates the relevant provisions of Article 32 of the Trademark Law.
Article 10 section 1 (7) of Trademark Law of the "deceptive" refers to the trademark itself or its constituent elements deliberately exaggerated the function of goods, thus covering the truth of goods in quality , raw materials, functional uses and other aspects, which is deceive consumers, and cause misunderstanding. "Other adverse effects" referred to Article 10 section 1 (8) of the Trademark Law means that the text, device or other constituent elements of the trademark may have negative effects on China's public interests and public order. In view of the fact that there is no evidence could indicate that disputed trademark has above circumstances, we don’t support those two claims.
Applicants claim that the disputed trademark accord with the case of Article 44 of the Trademark Law, which stipulates that "by means of deception or other improper method to obtain registration", We believe that, in the light of we’ll protect the applicant by other provisions of the Trademark Law, this clause is no longer applicable.
In summary, The applicant's invalid reasons are partially established.
According to Article 30, Article 45 section 1 and 2, and Article 46 of Trademark Law, we give following decision:
The disputed mark is invalid now.
The parties who refuse to accept the this decision may apply for a prosecute to Beijing Intellectual Property Court within 30 days after receiving the decision, and submit the copy of indictment to us simultaneously or within 15 days, or give a further notice in write form later.