Trademark Office of State Administration for Industry and Commerce recently issued, with respect to our client's trademark opposition case represented by our firm, the decision is in favor of our client and ruled that the opposed No. 5003630 "CLEMENTS RIBEIRO" trademark is not approved to register in China. This ruling benefits our client to get back its trademark exclusive rights in China.

Brief information about the case:

Our client created the clothing line of "CLEMENTS RIBEIRO" in 1993 and has been using the mark for nearly two decades. The mark has achieved a high degree of public recognition and renown on the world stage and has been registered by our client in several countries and areas, including the US, European Union, Turkey, and Japan. However, before our client filed a trademark registration application in China, our client found the opposed mark "CLEMENTS RIBEIRO" applied by another party (namely Rongjie Ye) is identical to our client's mark, and it is registered under similar categories. Therefore we acted on behalf of our client to file a trademark opposition to prevent the preemptive registration.

We successfully argued that Mr. Ye intentionally copied and imitated the design of our client's well-known trademark and uses it on goods categorized closely associated with our client's, in order to obtain improper benefits from our client's good reputation. This behavior would lead to confusion in the mind of the public, act injurious to our client' interest and substantially violate integrity and fairness criterion

We also pointed out that Mr. Ye has applied for registration a total of 531 trademarks, all of which are internationally renowned brands, such as ALVIERO MARTINI, TOD'S, NINE WEST, ENZO, PRADA, COACH, GUCCI, VERSACE, DIOR, BOBBI BROW, Anna Sui, BOSCH, Bentley, Louis Vuitton, Dunhill, Versace, Bosch, Hermes, Lamborghini and Cartier. It has been proven that Mr. Ye's behavior is an action with bad faith and also in violation of the principle of good faith.

Upon sufficient evidence and detailed grounds, the Office of examination decided that our arguments are tenable and the opposed mark is not approved for registration. Thereby, our client has cleared the obstacle for its registration of its mark.

Attorney's comments:

Brand protection is a regional matter. Trademark registration for a brand in one country does not necessarily lead to the legal right for using such mark in other countries. As in this case, our client has registered the trademark for its brand in several countries and areas; however it still faced the risk of losing its exclusive right in China. Since China adopts the first-to-file rule in trademark registration, there is a high risk in trademark infringement due to possible preemptive registrations. Generally, once another party preemptively apply and obtain the registration of the mark, it would be quite difficult for the true right-holder, by going through the time-consuming processes and paying extra expenses, to reclaim its right and get the mark back. And sometimes it could be all in vain. However, in this case, our client prevailed because we have filed the trademark opposition timely and properly, with strong evidence proving the good reputation and recognition of the brand which has been formed over the years by our client as well as the malevolent intention to possess this trademark by the applicant.

In brief, early filing is highly recommended in order to promptly protect the IP rights. It also is important to closely watch the market, monitor any possible infringement, and take actions in time.