CNIPA: Maserati Fails to Weed Off Namesake Trademark Used on Clothes
Beijing High People's Court recently made a final judgment on a trademark dispute case between Italian auto maker Maserati and Dengta (Liaoning)- based Anlite Leather Clothing Factory, ruling that the individual surnamed Liu, manager of Anlite Factory, had realized commercial use of No. 3760714 玛莎拉蒂 (Chinese translation of Maserati) trademark on garment making and leather processing from April 2, 2012 to April 1, 2015 and accordingly, rejecting the appeal from the Trademark Review and Adjudication Board (TRAB) and ordering the TRAB to remand decision.
The factory in the business of clothes processing was established solely by Liu on December 12, 2011. On October 21, 2003, Liu filed the application for registration of trademark in question, which would be approved on October 7, 2005, certified to be used on Class 40 services including garment making, suit measurements and leather processing.
On April 2, 2015, Maserati petitioned to the Trademark Office (TMO) to revoke the trademark in question on the ground that the trademark had not been used for three years during the period stated above.
During the phase of revocation, Liu presented evidences including tax payment receipts of OEM contracts and photos of his factory workshop to prove that the trademark in question had been used during the time. After examination, TMO upheld the registration of that trademark. The disgruntled Maserati then asked the TRAB for reexamination.
On May 2017, TRAB held that the evidences provided by Liu could not prove when they were formulated, so it may have no relationship with the trademark in question. Liu had no other evidences besides the copies to help prove its legitimacy, so the chain of evidence could not be established. The court found that they were hard to prove Liu realized open, true and effective commercial use of trademark in question on clothes marking. So TRAB decided to revoke the trademark in question.
Liu then brought the case to Beijing IP Court. Liu provided evidences including trademark licensing contracts, garment processing contracts and orders, tax payment receipts, photos of a plaque written with 玛莎拉蒂 hanged outside of factory, workshop photos, a self- employed businessman license, tax office permit and medals, in a bid to prove that Liu was closely associated with the trademark in question; Liu consented the use of the trademark in question by Anlite Factory; Liu and Anlite had been using the trademark in question constantly since 2011 when making clothes for other parties.
Beijing IP Court held that the evidences could prove the use of trademark in question on garment making during the stated period. So the Court made first- instance ruling on May 22, 2018, revoking the reexamination decision made by TRAB and ordering TRAB to make a new decision. TRAB then brought the case to Beijing High, which confirmed the case after hearing.