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Italy: The crackdown on Chinese trade mark squatters

Officina Profumo farmaceutica di Santa Maria Novella SpA – a 400-year-old company based in Florence, Italy – and its trade mark consultants at Bugnion SpA can claim victory against Chinese trade mark squatters. On October 11 2017 the Italian producer of luxury cosmetics won its oppositions before the CTMO, the Chinese Trademark Office, against a Chinese individual, CAI Zhifeng, who filed in bad faith the company's house mark:

The piece of news is particularly relevant because Santa Maria Novella had not yet registered its trade mark in China in class 35 and could claim a limited prior use of the mark in class 3. We all know how difficult it was to win this type of cases in the absence of a prior registered trade mark or unless the infringed mark was extremely famous in China. Bad faith in registration was found only in very limited cases where there was evidence of a business relationship between the trade mark owner and Chinese applicant. Often times owners of well known international brands were denied access to the Chinese market, because original products were considered counterfeits in China, if their mark had been filed preemptively by a smart Chinese. Even a giant like New Balance had to face this problem.

Santa Maria Novella's consultants at Bugnion collected massive evidence of long-lasting international reputation of the brand, including thank you letters by Hillary Clinton to the company's owner and CEO Mr Eugenio Alphandery.

Based on the evidence provided, the Chinese examiner found the bad faith of the trade mark squatter, who had registered at least other 67 trade marks and stated that "In this case, the evidence submitted by the Opposer can prove its "SANTA MARIA NOVELLA & Device" trademark has had higher popularity among relevant consumers after the use and wide publicity for a long time, moreover, the Cited Trademarks have stronger creativity and distinctiveness, to which the Opposed Trademark is almost identical, and the Trademark Applicant did not make reasonable explanation for the creativity of the Opposed Trademark. Thus, the Trademark Applicant has filed the registration of the Opposed Trademark with improper manner and violated the principle of good faith abided by in the civil activities."

The decisions come after a year of legislative and political pressure on the CTMO to stop preemptive registration by trade mark squatters. The new Chinese Trademark Law and the examination standards published in December 2016, clearly included among registrations obtained by deceptive or other "improper means", the following cases:

1) the case in which a disputed trade mark applicant applies for registration of multiple trade marks, which are identical or similar to other's trade mark with relatively strong distinctiveness;

2) the case in which a disputed trade mark applicant applies for registration of multiple trade marks, which are identical or similar to other's trade name, enterprise name, social organisation and other institution name, specific name, packing and decoration of famous goods, etc.; and

3) the case in which a disputed trade mark applicant applies for registration of plenty of trade marks, and is obviously lack of true intention to use.

In April 2017 the Beijing Intellectual Property Court held a press conference on the trial of such cases, introducing the measures taken to regulate the registration of trade marks and publishing a total of 18 typical cases.

On September 3 2017 Cui Shoudong, the Deputy Director of Trademark Office, had a speech and pointed out the long-standing problems including bad faith and preemptive trade mark registrations and the future plan against them. He also informed the public that the CTMO is building a database listing all the suspected applicants that acted in bad faith and filed preemptive registrations.

Paola Stefanelli


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