How difficult is it – exactly – to prevent Chinese companies from using your brand name or logo? Ask Akris AG. The Swiss fashion brand, which shows in Paris each season, recently reclaimed rights in its name after fighting for 12 years. That’s right. Between 2003 and 2015, Akris AG was up against a Hong Kong-based company that decided to file a trademark application for the Akris name roughly 81 years after Akris AG began using its mark continuously on garments and accessories and nearly 10 years after the Swiss company first gained trademark rights in the Far East.
That, my friends, is the definition of a bad-faith trademark application.
The background is this: Akris AG got its start in 1922 when founder Alice Kriemler-Schoch first decided to make polka-dotted garments. From the letters in her own name, she fashioned the name “Akris” for her brand, and the company has used it ever since. In 1985, it adopted a new logo, a stylized version of the word “Akris” with each of the letters separated by hyphens, “A-K-R-I-S-.”
Fast forward to 2003, when Hong Kong-based France Benny International Enterprise Group Co. (“France Benny”) filed a trademark application with the Chinese Trademark Office (“CTMO”) for exactly the same stylized version of the Akris AG logo, “A-K-R-I-S-,” for use on “clothing, shoes, hats etc.” The CTMO preliminarily approved the mark in January 2005.
Shortly after France Benny filed its application, Akris AG filed an opposition, claiming that it is, in fact, the rightful owner of the mark and has held a Chinese trademark registration for its Akris Punto collection since 1995. The CTMO’s appeal board sided with Akris AG.
All the while, however, a Chinese individual surnamed Liang filed to cancel one of Akris AG’s “PUNTO AKRIS” marks in 2009, by alleging that Akris had not used the mark for 3 years and as a result, had lost rights in it. Akris AG was able to reclaim its rights on the mark in November 2013, only to have it cancelled again for “non-use” in March 2014.
As a result, when Gu Bai Tool, a Chinese company based in Shanghai, appealed the CTMO appeal board’s finding, the Beijing First Intermediate Court sided with Gu Bai Tool, as Akris AG no longer held valid trademark rights in the Akris name in China.
In proceedings before the Beijing High Court, Akris AG was ultimately able to show that France Benny, Gu Bai Tool, and Akris Hong Kong (the company whom Gu Bai Tools assigned the rights to the Akris name) had all acted in bad faith in attempting to trademark the Akris name despite its true ownership with Akris AG.
Akris AG provided evidence that the three successive owners of the opposed “A-K-R-I-S-” mark, France Benny, Gu Bai Tool, and Akris Hong Kong, had intertwined shareholder relations. Additionally, Akris AG alleged that France Benny had also filed “a startling number of trademark applications” for world famous brands including Tods, Lladro, and others.
The Beijing High Court referred the case back to the CTMO appeal board, which refused to the register the “A-K-R-I-S-” trademark, holding that it was preliminary approved as a result of “fraud or any other unfair means.” Despite an appeal by Akris Hong Kong, in April 2017, the Beijing IP Court upheld the appeal board’s decision by rejecting Akris Hong Kong’s “A-K-R-I-S-” mark.
Akris AG has since initiated another legal action in Hong Kong, seeking to force Akris Hong Kong to change its name, as it is “misleading” due to its similarity to Akris AG’s name. In February, the court sided with Akris AG, and Akris Hong Kong changed its name to Huitong Trading Development Limited.
While this 12-year fight resulted in a victory for Akris AG, “The battle does not seem to be over yet,” according to Chinese intellectual property lawyers Bai Gang and Yongjian Lei, as another company named Akris Shanghai Apparel Co. has filed for a handful of “A-K-R-I-S-” trademarks that are still pending before the CTMO. The bright side, per Gang and Lei, is that Akris AG’s trademark applications predate most of those filed by Akris Shanghai Apparel Co., which was established in June 2016. The downside: There is no telling how the CTMO will rule.