Supreme Court rules in favour of Lacoste in invalidation proceedings

China

Recent invalidation proceedings that reached China’s Supreme Court have showed that evidence submitted at the retrial stage could be taken into consideration.

The contested trademark (No 3150675, depicted below), designating clothing, swimming suits and layettes, among other things, was filed on April 18 2002 and registered on October 28 2003.

 

It was then transferred twice and its current owner is France Crocodilian Shirt Group Limited, a company registered in Hong Kong.

On October 23 2007 Lacoste filed an application for invalidation of the contested trademark before the Trademark Review and Adjudication Board (TRAB), based on Article 28 (similarity), Article 13(2) (registered well-known trademark) and Article 41 (fraud or other unfair means) of the Trademark Law. On May 10 2010 the TRAB ruled that the registration of the contested trademark should be cancelled for clothing, shoes and leather belts, but that it should be maintained for "swimming suits and layettes". The TRAB agreed that the contested trademark was visually similar to Lacoste's cited trademark (depicted below), but considered that "swimming suits and layettes" were not similar to the designated goods covered by the cited trademark.

 

Both Crocodilian Shirt Group and Lacoste were dissatisfied with the TRAB's decision and the case was brought to the Beijing First Intermediate People's Court for judicial review. The Intermediate Court maintained the TRAB's decision in the first instance in 2010, and the Beijing Higher People's Court maintained the Intermediate Court's judgment in the second instance in 2011.

Lacoste submitted the case to the Supreme People's Court for a final review and, on December 2011, the Supreme Court decided to retry the case.

Lacoste submitted five additional pieces of evidence when applying for retrial:

  1. the 10th edition of the "Classification of Similar Goods and Services";
  2. an administrative judgment of the Beijing First Intermediate People's Court proving that "swimming suits and layettes" and "clothing" have been recognised to be similar;
  3. an administrative penalty decision issued by the Chizhou Administration for Industry and Commerce (AIC) of Anhui Province;
  4. an administrative penalty decision issued by the Quanzhou AIC; and
  5. various documents showing the actual use of the contested trademark.

According to Lacoste, this evidence proved the bad faith of Crocodilian Shirt Group, which had transformed the trademark through use and made it more similar to Lacoste's crocodile device registrations.

During the retrial, Lacoste also submitted a decision issued by the China Trademark Office in 1994 in opposition proceedings against the trademark EXING ((1994) Shang Biao Yi Zi No 368) to prove that Lacoste’s cited trademark had been well known since 1994.

On December 8 2014 the Supreme Court overturned the judgments of the two lower instances and the TRAB's decision, and the TRAB was ordered to issue a new decision. The Supreme Court confirmed that the remaining goods ("swimming suits and layettes") should be considered to be similar to clothing, especially considering the great market recognition and influence of Lacoste's device trademark and the bad faith of Crocodilian Shirt Group.

China's trademark classification, the "Classification of Similar Goods and Services", went through an overhaul in 2012. It rectified some inconsistencies, such as "swimming suits and layettes" and "clothing" not being similar. The target consumers, functions and sale channels of those goods are indeed closely connected and, at the same time, many cases proved that the old classification caused problems of infringement in the market. Although the Supreme Court did not directly comment on this new classification, it showed a positive attitude by admitting that the evidence submitted by Lacoste at the retrial stage could be taken into consideration, and the 2012 classification presumably played an important role in this case.

As to the other supplementary evidence filed in the retrial procedure, it is observed that it was admitted by the Supreme Court as corroborative evidence, which contributed to a favourable judgment for Lacoste. In particular, it is worth noting that the recognition of the 1994 decision (Shang Biao Yi Zi No 368) moved the date on which Lacoste's cited trademark was judicially recognised as well known up to 1994. This will have a positive effect on future cases involving Lacoste. In this regard, brand owners are encouraged to file decisive new evidence at any stage of the judicial review procedure.

Lei Yongjian, Wan Hui Da Intellectual Property Agency, Beijing

Wan Hui Da represented Lacoste in this case

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