Sue Gui's team achieved a significant victory in Appellant Henan Snow Gildan Clothing Co., Ltd v. Appellee GILDAN ACTIVEWEAR SRL, Defendant in first instance CNIPA Trademark Invalidation Administrative Dispute, successfully overturning an unfavorable decision from the CNIPA.

1. Case Background

This case is a trademark invalidation administrative dispute. The appellee, GILDAN ACTIVEWEAR SRL, is a world-renowned supplier of clothing products, enjoys the exclusive right to register trademarks of "杰丹(Gildan in Chinese)" and "GILDAN", and is the creator and true owner of the "杰丹(Gildan in Chinese)" and "GILDAN" series of trademarks . GILDAN is a global clothing brand with the concept of environmental protection. It is unique in the world with its non-printed solid color ready-to-wear. "GILDAN" brand has a market share of 56% in North America, far exceeding the sum of any other brands. In 2008, the global annual sales volume reached nearly 600,000,000 pieces, and the products are distributed in the United States, Canada, Europe, Australia, Japan, Singapore, China and other places, satisfying the different tastes and preferences of consumers from all over the world.

The appellant in this case, Henan Snow Gildan Clothing Co., Ltd, applied for the registration of the trademark "Snow Gildan" under No. 28081093 in Class 40 on services including "custom assembling of materials for others; applying finishes to textiles; custom tailoring; dressmaking ", which is an apparent imitation and plagiarism for the client’s brand. The client filed an invalidation procedure against the trademark of the appellant according to the law, but the CNIPA decided to maintain the disputed trademark. Therefore, we filed a lawsuit with the Beijing IP Court on behalf of the client, asking the court to revoke CNIPA’s decision and have the CNIPA reissue the decision pertaining to the disputed Mark. After receiving favorable first instance judgment from Beijing IP Court, the Appellant swiftly filed appeal and claimed the disputed mark is not similar to the client’s prior marks with respect to identical or similar goods/services. It claimed the disputed mark did not violate Articles 30 and 31 of the China’s Trademark Law, and asked Beijing High Court to revoke the first instance judgment.

2. Challenges

First, the client does not have any prior registration of the "GILDAN" trademark in Class 40, only having the Chinese mark “杰丹(Gildan in Chinese)” in this class. Therefore, when determining whether the disputed Mark violates Articles 30 and 31 of the China’s Trademark Law, the Defendant in first instance, CNIPA, strictly followed the Table of Similar Goods and Services, and held that the disputed Mark was not similar to the client’s prior mark “杰丹(Gildan in Chinese)” in Class 40, and that the designated services do not constitute similar goods or services with the designated goods and services of the client's prior "GILDAN" trademarks in Classes 25, 35, 39 and 42.

Second, the client's trademark has no record of “well-known” status, and there is no sufficient evidence proving that its "GILDAN" trademark has been used in services such as "custom assembling of materials for others; applying finishes to textiles; custom tailoring; dressmaking" designated by the disputed Mark, and has obtained a certain reputation in mainland China. Therefore, there are difficulties in claiming "cross-class protection" and "the disputed Mark is preemptively squatting others’ mark which has already been in use and with a certain influence".

3. Chang Tsi's Strategies

In view of the fact that the client has always hoped that its brands may be recognized as well-known trademarks, we actively instructed the client to collect reputation evidence immediately after the case was initiated. In addition to the financial annual reports, audit reports, purchase and sales contracts, invoices, awards, advertising magazines, exhibition pictures and other evidences collected by the client, we also conducted website notarization and library search to strengthen and supplement the client's popularity evidence in online media and journal reports. In order to better present the client's reputation to the judge, we intuitively summarized and presented information including signing time, counterparty, and amount of each purchase and sale contract, and the issue time and amount of each invoice in the form of a table, so as to create a visual impact on the judge. When summarizing and sorting out the evidence, we paid special attention to the combined use of the client's Chinese and English trademarks in online reports, consumer reviews, newspapers and periodicals, and contracts between the client and dealers and third-party service providers, so as to prove the client's Chinese and English trademarks “杰丹(Gildan in Chinese)” and "GILDAN " have established corresponding relationship, which has been recognized by consumers. At the same time, we made a detailed review of the designated goods and services of the client’s prior "GILDAN" trademarks, and claimed that the services designated by the Disputed Mark, such as "custom assembling of materials for others; applying finishes to textiles; custom tailoring; dressmaking " and those of the client’s prior "GILDAN" trademark "clothing (25); sportswear design (42)" are closely related and highly related similar goods and services. While making efforts for well-known status, we also laid the foundation for the court to make a breakthrough on the issues of trademark similarity and goods/services similarity. During the second instance, we continued with such litigation strategy, exhibiting the reputation evidence jointly collected by the client and us to Beijing High Court and insisting on the correspondence relationship between the client’s Chinese and English trademarks "杰丹(Gildan in Chinese)" and "GILDAN". We elaborated the reasonability and soundness of the first instance judgment via Attorney Statement. Eventually, we successfully affected the court’s discretion and obtained final judgment favorable to the client.

4. Significance

First, this is a typical case of a third party maliciously squatting the client's trademark. It is also a valuable favorable judgment for the court to successfully reverse the unfavorable ruling at the stage of CNIPA. Under the general trend that the courts are becoming more and more conservative in hearing cases, being able to help clients reverse the case and invalidate the third party’s mark will indeed greatly encourage the client's confidence in domestic brand protection.

Secondly, the court made a breakthrough in judging on the similarity of trademarks and the similarity of goods and services. The court confirmed the disputed mark and the client’s GILDAN marks in Classes 25 and 42 and "杰丹(Gildan in Chinese)" mark in Class 40 constitute similar trademarks on the similar goods and services.

Thirdly, under the background of the increasingly serious nationalization of global intellectual property trials, the fair trial of this case demonstrates the Chinese government’s good international image of attaching great importance to intellectual property protection and treating domestic and foreign parties fairly.