CHANG TSI
Insights
This case is an invalidation action case. In this case, the China National Intellectual Property Administration (CNIPA) made a significant breakthrough in determining whether the Complainant's Cited Mark and the Disputed Mark (MK Logo) constitute similar marks, namely recognizing that the Complainant's Cited Mark and the Disputed Mark (MK Logo) are dissimilar trademarks. The CNIPA comprehensively considered the corresponding relation between the Respondent’s “MK” and “MICHAEL KORS”, their fame and relevance with the Respondent, and the concurrent use of the two parties’ marks in the market cannot cause any confusion, etc. factors.
The Disputed Mark (MK Logo) is the core mark of the Respondent on the goods “bags; handbags, etc.” in Class 18, and serves as the basis for the Respondent’s rights in opposition, invalidation action, administrative litigation, and civil infringement cases. If this trademark is declared to be invalid, it would have a significant impact on the Respondent’s global business, including China.
Furthermore, the Complainant in this case has previously filed a civil infringement lawsuit against the Respondent and applied for multiple trademarks that are highly similar to the Respondent's (MK Logo) series of trademarks. The filing of this invalidation action itself demonstrates the Complainant’s clear bad faith. After being entrusted by the Respondent, Chang Tsi & Partners carefully analyzed the case details and emphasized in the response grounds, the Complainant's bad faith, the strong originality, distinctiveness, and reputation of the Disputed Mark, dissimilarity between the two parties' trademarks, the absence of confusion due to concurrent use, and the Respondent’s manner of using Disputed Mark. We also submitted relevant evidence, including the favorable judgments received in the civil infringement lawsuit to support our grounds. Ultimately, we successfully persuaded the China National Intellectual Property Administration to issue an favorable invalidation action decision, thereby maintaining the registration of the Disputed Mark.
In this case, the Complainant, Shantou Chenghai Jianfa Handbag Craft Factory, has applied for multiple different forms of MK and combination trademarks in the most well-known Classes 18 and 25, which are the core classes of the Respondent. Besides maliciously applying for trademarks similar to the Respondent's (MK Logo) series of trademarks, Shantou Chenghai Jianfa Handbag Craft Factory has also engaged in trademark infringement and unfair competition in its commercial operations. This includes promoting and marketing bag products on several major platforms such as Tik Tok, Kuaishou, and Taobao, etc., using marks highly similar to the Respondent's (MK Logo) trademark. The Complainant's use demonstrates subjective bad faith with the intent to mislead consumers and confuse the source of their products.
Our firm, representing MICHAEL KORS (SWITZERLAND) INTERNATIONAL GMBH, submitted the invalidation response grounds and evidence with the CNIPA in October of 2022. On October 21, 2024, the CNIPA issued an invalidation decision for this case, maintaining the registration of the Disputed Mark on all the designated goods.
Combining the focal points and difficulties of this case, we have formulated the following strategies:
1. According to the examination standards of the China National Intellectual Property Administration (CNIPA), point out that the registrability of a two-letter combination mark is judged based on whether it has distinctiveness. In this case, the Complainant's Cited Mark was approved for registration because the font used gave the "MK" letter combination some distinctiveness, not because the "MK" letter combination itself is distinctive. In Class 18, there are multiple coexisted "M" and "K" combination marks. These MK letter combination marks can coexist just because their respective designs have made them distinctive and exclusive, thus enabling them to distinguish the source of goods in actual use and coexist in the market.
2. The Respondent’s use of the Disputed Mark is in good faith, and there is room for coexistence between the two parties's marks. The Disputed Mark (MK Logo) and the Complainant's Cited Mark are not confusingly similar, and the Respondent’s use does not infringe upon the Complainant's exclusive rights to the registered mark. By comparing the letter composition, overall appearance, and conceptual creativity of both marks, we can argue that the two marks are not similar. According to CNIPA's examination standards, the two parties’ marks do not constitute similar trademarks. Point out that the Complainant's Cited Mark has weak distinctiveness and has not been extensively used on the designated goods within mainland China, thus lacking fame. Furthermore, the Complainant has not properly used the Cited Mark on the designated goods but instead has used marks which are highly similar to the Disputed Mark, indicating an intention to ride on the Respondent’s market reputation. Some of the designated goods of the Disputed Mark and those of the Cited Mark do not belong to similar goods, so the marks do not constitute similar marks used on similar goods. Additionally, a detailed analysis of the brand awareness, market positioning, sales channels, sales volume, and the level of attention of the relevant public, etc. shows that the coexistence of the Disputed Mark (MK Logo) and the Cited Mark in the market will not cause confusion among the relevant public.
3. List and submit fame evidence of the Respondent and its MICHAEL KORS, (MK Logo) series marks to prove that before the application date of the Disputed Mark, the Respondent’s prior MICHAEL KORS series marks had already gained high fame on goods in Classes 18 and 25 through extensive use and promotion. The (MK Logo) and "MICHAEL KORS" have formed a corresponding relationship, further proving that the Disputed Mark has strong distinctiveness and originality. The registration and use of the Disputed Mark on similar or identical goods will not cause confusion among the consumers.
4. Submit fame evidence of the Respondent's (MK Logo) to prove the origin of this mark, that the Disputed Mark, through the Respondent’s extensive use, has established a one-to-one corresponding relation with the Respondent and "MICHAEL KORS" brand, that they have been of strong distinctiveness and originality. Furthermore, the CNIPA has recognized in multiple decisions that the "MK" and "MICHAEL KORS" marks have formed a unique corresponding relationship in the fields of clothing, handbags, jewelry, etc., and have gained certain market recognition. The coexistence of the Disputed Mark and the Complainant's cited mark in the market will not cause consumer confusion, let alone they are dissimilar.
5. The Respondent legally holds the copyright to the "MK Logo" series works, and the Respondent’s use of the Disputed Mark is in good faith, without copying or imitating the Complainant's Cited Mark.
6. Submitting a list of the Complainant's applied marks and use evidence to prove the Complainant's subjective bad faith in copying and imitating the Respondent's (MK Logo) marks. The Complainant has applied for multiple marks that copy the Respondent’s marks, which cannot be coincidental, and the actual use of the Complainant’s product packaging closely resembles that of the Respondent.
7. Submitting favorable decisions/judgments obtained by the Respondent in actions against the Complainant's marks, as well as civil judgments to prove that the use of the Cited Mark on the designated goods by the Complainant would cause reverse confusion, and to support the argument that the Complainant's filing of the invalidation action is evidently in bad faith.
This case appears to be a straightforward case of maintaining the registration of the Disputed Mark by determining that the two parties’ marks do not constitute similar trademarks. Considering that two parties’ marks are consisting of same letters, we analyze the dissimilarity between the two parties’ marks, the fame of the Respondent’s mark, the Complainant's bad faith in application and usage forms, and submit strong evidence such as the Respondent’s fame evidence and prior rulings received by the Respondent to influence the examiner's judgment and comprehensive consideration. Ultimately, based on the Article 30 of the China Trademark Law, the Disputed Mark is maintained registration.
This demonstrates that in response to invalidation action cases, besides focusing on the dissimilarity analysis of the two parties’ marks, other factors such as the fame of the Respondent and the Disputed Mark, usage methods, relevant prior rulings, and the Complainant's bad faith can also significantly influence the determination of trademark similarity. It also provides a new approach for preparing arguments in future conflict cases, emphasizing not only the distinctiveness of the Respondent’s mark and providing sufficient fame evidence, but also proving the Complainant's subjective bad faith and supporting it with strong evidence (such as prior rulings).
