Abstract
We filed an invalidation action against the trademark,
(No.67099080 in Class 21) (“the disputed mark”) on behalf of J.CHOO LIMITED(“Client”) on July 3, 2023. The National Intellectual Property Administration, PRC (“CNIPA”) examined the case and decided to invalidate the disputed mark for registration.
Background
J.CHOO LIMITED is the owner of famous brands “JIMMY CHOO” and “CHOO” for women’s shoes and other fashion articles. J.CHOO LIMITED registered the trademarks “JIMMY CHOO” and “CHOO” in several classes in mainland China, and the trademark “JIMMY CHOO” over the goods “women’s shoes; perfume” enjoys high reputation amongst relevant public. The client was of the opinion that the disputed mark is a “similar mark over similar goods” with the client’s mark“ ” under registration No.47145978 and the mark “ 
” under registration No. 47129373. Upon communication with client, we were entrusted to file invalidation against this trademark.
The details of the disputed mark and the cited marks are listed as below.
Disputed Mark | Cited Mark 1 | Cited Mark 2 | |
Trademark |  |  |  |
App. No. | 67099080 | 47145978 | 47129373 |
App. Date | September 8, 2022 | June 10, 2020 | June 10, 2020 |
Reg. Date | April 21, 2023 | March 14, 2023 | March 7, 2021 |
Class | 21 | 21 | 21 |
Subclass &Designated Goods | Basins [receptacles]; Glass bulbs [receptacles]; Beer mugs; Watering cans; Brushes; Toothbrushes; Toothpick holders; Cosmetic utensils; Thermos bottle; Cloths for cleaning | Precious metal bowl; Precious metal household container; Tableware, other than knives, forks and spoons; Cups; Glassware for daily use (including cup, plate, kettle, and jar); Ceramics for household purposes; Busts of porcelain, ceramic, earthenware, terra-cotta or glass, etc. | Precious metal bowl; Precious metal household container; Tableware, other than knives, forks and spoons; Cups; Glassware for daily use (including cup, plate, kettle, and jar); Ceramics for household purposes; Busts of porcelain, ceramic, earthenware, terra-cotta or glass, etc. |
Key Issues
In the invalidation, we mainly argued that:
1) The disputed mark is a similar mark over same or similar goods compared with the Cited Marks. Coexistence of the marks in the market may easily cause confusion or misleading to the relevant public, in violation of Articles 30 and 31 of the China Trademark Law;
2) Given the extremely high reputation of the Cited Mark “JIMMY CHOO” in the fashion industry, the registration and use of the disputed mark may easily cause confusion and misleading to the relevant public;
3) The disputed party filed the disputed mark with improper means, which violates the principle of good faith, in violation of Articles 7 and 44.1 of the China Trademark Law;
4) The registration of the disputed mark is deceptive, and will confuse and mislead the relevant public over the quality and source of goods, in violation of Chinese Trademark Law, Article 10.1(7).
On June 26, 2024, the CNIPA issued the decision: The disputed mark is similar to the Cited Marks 1-2 in terms of letter composition and overall appearance, the disputed mark doesn't form new meaning to be distinguished from the cited marks. Therefore, the marks constitute similar marks. The designated goods of the disputed mark are same as or similar to those of the Cited Marks 1-2 in terms of functional use, sales channels and consumers. The coexistence of the marks over the same or similar goods may easily cause confusion and misleading to the goods' source among the relevant public, in violation of Articles 30 and 31 of China Trademark Law. There is no evidence proving that the disputed mark violates Article 10.1.(7) of China Trademark Law. G iven that the CNIPA has protected the applicant's marks with Articles 30 and 31 of China Trademark Law, they don't comment on whether the disputed mark violates the Article 44.1 of China Trademark Law.
Key Point of the Case
The key issue of this case is that 1) the disputed mark is a “similar mark” with the cited marks; and 2) the goods of the disputed mark are similar to those of the client’s cited marks.
With respect to issue 1, according to the "Trademark Examination and Trial Standards," if two trademarks, or one of them, consist of two or more relatively independent parts, and their distinctive parts are similar enough to easily cause confusion among the relevant public regarding the source of the goods or services, they are determined to be similar trademarks. For example, 
and ADA.” In our case, the disputed mark consists of two relatively independent parts, CHOO and BEAUTY, the word BEAUTY bears weak distinctiveness when used on the goods such as, Glass bulbs [receptacles], Cosmetic utensils, so the distinctive part in the disputed mark is the word CHOO, which is same with Cited Mark 1 CHOO. Therefore, the disputed mark is similar to Cited Mark 1 based on the aforesaid examination standard. Cited Mark 1 is the abbreviation of Cited Mark 2 JIMMY CHOO, so if the disputed mark coexists with Cited Mark 2, it may cause confusion amongst relevant public. Thus, the disputed mark also is similar to Cited Mark 2. We also submitted several precedents, such as opposition decision of the mark CHOOYOUR vs CHOO and JIMMY CHOO, opposition decision of the mark CRAETIVEDIOR vs Dior and Christian Dior, to prove that the disputed mark is similar to the cited marks. In addition, we also submitted abundant evidence to prove the cited marks’ high reputation in China before the filing date of the disputed mark, thus, coexistence of the disputed mark and the cited marks may easily cause confusion amongst the relevant public.
With respect to issue 2, because J.CHOO LIMITED has registered the cited marks covering the goods in all subclasses of Class 21, the disputed mark’s goods are entirely included by the goods of the cited marks, therefore, the argument of similar goods is quite straightforward. Considering that it is usually difficult to break the Chinese Classification of Goods and Services to prove the goods/services in different subclass as similar, we recommend applicants pick at least one item in each subclass when filing trademark application for registration to have a broader protection scope. In this way, once the applicants register their trademarks covering the entire class, it will be much easier when they oppose a similar mark in the same class.