Designer Brand Supreme Defeats Squatter in All Forums
Recently, Beijing High People's Court made a final judgment on the dispute between the U.S.- based Chapter Four Company, which runs the apparel brand "Supreme" and Supreme Company over No. 17076038 trademark "Supreme and its figure" (trademark in dispute). Beijing High held that the trademark in dispute of Supreme Company and No. 14108746 trademark "Supreme" (reference trademark) of Chapter Four constitute similar marks used on similar goods such as clothing, upholding the TRAB (Trademark Review and Adjudication Board under the former State Administration for Industry and Commerce) ruling and rendering the trademark in dispute invalid.
The reference trademark, which was filed for registration on March 4, 2014, has undergone trademark rejection and review proceedings, and was eventually approved for registration on January 21 this year, certified to be used on Class 25 goods such as clothing and hats (head-mounted).
The trademark in dispute was filed for registration by Anglo- American Brand International Limited on May 29, 2015, certified to be used on Class 25 goods such as apparel and was approved for transfer to USNYC Inc. on May 20, 2018. Later , it was transferred to Supreme Company on November 13 of the same year.
On October 20, 2017, Chapter Four lodged an invalidation request to the former TRAB over the trademark in dispute, claiming that the reference trademark constitutes a well- known trademark used on goods including clothing and hat (head- mounted), and the trademark in dispute and the reference trademark constitute similar trademarks used on the same or similar goods which damaged their previous copyrights, and the trademark in dispute was obtained by "other improper means for registration" prescribed by the Chinese Trademark Law.
On December 27, 2018, the TRAB held that the goods such as clothing on which the trademark in dispute was certified to be used have similar function and use with the reference trademark on which the reference mark was certified to be used, so they constitute similar marks used on the same or similar goods. The registration and use of the trademark in dispute does not damage the prior copyright of the reference trademark. The Anglo- American Brand Company has applied for the registration of the "Supreme" trademark on multiple classes. The trademark in dispute is deemed registered by other improper means. In summary, the former TRAB ruled that the trademark in dispute was declared invalid.
The disgruntled Supreme Companybrought the case to Beijing IP Court. The trial court held that the trademark in dispute and the reference trademark constitute similar marks used on the same or similar goods and the original applicant of the trademark in dispute Anglo- American Brand Company registered the trademark by other improper means.The trial court rejected the Supreme company's complaint.
Supreme Company then appealed to Beijing High People's Court.
Beijing High held that the coexistence of the two marks can easily mislead the relevant public to believe that the two marks originate from the same subject or that their providers have a specific connection, which constitute similar trademarks used on the same or similar goods. In view of the fact that the case has determined that the application for registration of the trademark in dispute violates the relevant provisions of the Chinese Trademark Law, the Court will no longer comment on whether the trademark in dispute violates the relevant provisions of "other improper means for registration". In this connection, the appellate court denied Supreme Company's appeal and upheld the first-instance judgment.
Source: China IP News