Wanhuida Intellectual Property - China
As a rising fashion brand in the Chinese marketplace, Tommy Hilfiger is being challenged by an increasing number of copycats. Here, infringers usually register a mark that bears some resemblance to Hilfiger’s word and/or device marks and alter it by highlighting ‘Tommy’ and/or adding colour.
In the case at hand, a local Chinese company acquired the registered trademark shown below from a third entity.
Figure 1. Chinese company’s trademark (No 12396976)
The mark was registered in respect of “girdles (clothes)”, for which Tommy Hilfiger does not have an earlier trademark registration. Hilfiger’s flag logo is shown below.
Figure 2. Tommy Hilfiger’s flag logo
The Chinese company had been using a colour version of the mark, which imitated Hilfiger’s logo. Hilfiger initiated an invalidation action against the mark and successfully invalidated it on the grounds of prior use and the similarities between its mark and the designated goods of the disputed mark.
Although the two marks can be distinguished from one another, if the black and white mark is coloured in exactly the way as Tommy Hilfiger’s logo, the degree of similarity sharply increases (see Figures 3 and 4).
Figure 3. Disputed mark
Figure 4. Colour form of Trademark No 12396976 in actual use
The holder of the disputed mark registered the goods under “girdles (clothes)”, which is categorised in a different subclass from that of Hilfiger’s designated goods “apparel”, to reduce the possibility that the goods would be found similar to Hilfiger’s. Evidence was provided for:
- the Chinese company’s use of the disputed mark in the same colour as Hilfiger’s cited mark;
- Hilfiger’s use of the mark on “girdles”; and
- the relevance of “girdles” and “apparel” in the fashion industry.
Although the China National IP Administration (CNIPA) dismissed the invalidation, both the Beijing IP Court and Beijing High Court overturned its decision and ruled in favour of Hilfiger, citing Articles 30 and 32 of the Trademark Law. The court decision found that:
- Hilfiger’s mark is reputable for apparel in China;
- “girdles (clothes)” are deemed to be similar to “apparel”;
- Hilfiger’s mark had acquired certain influence on “girdles” through extensive use in China; and
- the adverse party deliberately acted in bad faith.
The court of appeal handed down its decision on 30 March 2020.
On 17 June 2020 CNIPA promulgated the Criteria for Determination of Trademark Infringement, Article 24.1 of which provides that:
The registrant of a registered trademark without specifying any colours may colour his/her trademark freely. However, where the colouring aims to free-ride other’s registered trademark in respect of same or similar goods/services so that the coloured trademark is similar to the latter’s registered trademark, thus is likely to cause confusion, it falls under the trademark infringement act as prescribed by Article 57.2 of the Trademark Law.
There is no way to know for sure whether the CNIPA takes note from this particular case, but Hilfiger could definitely fall back on Article 24.1 to enforce its iconic flag logo in future trademark infringement cases, which is welcome news for many brand owners.