This case is the first one that the trademarks of Tiffany and Company (hereinafter referred to as “Tiffany”) are recognized as well-known trademark via
Judicial procedures. this case and it plays a positive demonstration role in other civil infringement cases and administrative cases Tiffany involved. Moreover, this case has been selected as one of “Typical Cases on Regulating Trademark Registered in Bad Faith” by Beijing Intellectual Property Court.
This case is a typical administrative case concerning a domestic enterprise taking a free ride of the reputation of famous foreign brands. Shanghai Zhendi Decorative Material Co., Ltd. (hereinafter referred to as “Shanghai Zhendi”), as the plaintiff in this case, filed application for trademark “蒂凡尼” under No. 8009772 to the Trademark Office under the State Administration of Industry and Commerce (SAIC), which was designated to be used in class 27 on the goods “wallpaper, etc.” In September, 2015, the Trademark Review and Adjudication Board (TRAB) under SAIC made a decision on declaration of invalidity based on the request proposed by Tiffany, to declare invalidation of this trademark. However, Shanghai Zhendi was dissatisfied with the decision, and initiated a lawsuit before Beijing Intellectual Property Court.
Entrusted by Tiffany, Chang Tsi & Partners carefully analyzed the details, discovered the difficulties, and designed a customized litigation strategy. To help the collegial panel to comprehensively understand the evidence and materials related to this case, the attorneys of Chang Tsi & Partners prepared the detailed evidence list and description. During the court hearing, the attorneys of Chang Tsi & Partners specifically explained, in conjunction with the evidence, the bad faith shown by the plaintiff taking advantage of Tiffany`s trademarks, and submitted detailed and pointed representation advice with respect to the core issues of this case. In the end, the attorneys on behalf of Tiffany successfully convinced Beijing Intellectual Property Court to recognize that the marks “TIFFANY” and “TIFFANY & CO.” are well-known trademarks, and then accordingly rejected the plaintiff`s claims.
In 2018, the abovementioned case was selected by The Supreme People’s Procuratorate of PRC as one of ten classic cases regarding protection of intellectual property rights in 2017.
Our client LS&Co. is the owner of “LEVI’S” in China. Its brand “LEVI’S” is known as “Li-Wei-Si” (In Chinese: 李维斯) by Chinese consumers. A trademark squatter, an individual named Liu Zuofu, registered a trademark fully incorporating “Li-Wei-Si” as early as 2010: “Ku-Ai-Li-Wei-Si.” At this time the client owned no prior registration of the Chinese mark “Li-Wei-Si.” Liu Zuofu also owns a company named Guangzhou City Yixuan Apparel Co., Ltd. to manufacture and distribute “Ku-Ai-Li-Wei-Si” branded infringing jeans.
Under the trend of the globalization, China is planning to take one step forward to improve the design patent legal environment. Specifically, China plans to amend the patent law in order to harmonize with the laws in other major member countries in universal design patent treaty.