MaxMara has landed a victory in its fight against a native Chinese entity that filed to register what is called a confusingly similar trademark. The Italian brand, which has opened more than 400 stores in China in the past decade alone, filed suit with the Chinese Trade Mark Office (“CTMO”) last year after discovering that native Chinese entity, Hangzhou Ku Ku Jie Trading Co. (“Hangzhou”) had filed to register the trademark “MaxIMazo 玛克斯玛佐” in the class of goods that covers garments and accessories.
According to HFG Law, the Shanghai-based law firm that represented MaxMara, the CTMO “performed a substantive examination [of the Hangzhou mark and of the marks currently registered with the CTMO] and did not find any obstacle to the registration [namely, any already-registered marks that were confusingly similar].” As such, the application was preliminary approved and published for opposition. (As you may know, before a trademark may be registered, a number of requirements must be satisfied. One such requirement is that the mark must be published for opposition thereby enabling the holders of any “confusingly similar” marks to object to its registration).
Upon publication for opposition, MaxMara discovered Hangzhou’s pending application and filed an opposition to prevent the registration, alleging that the trademark was too similar to its own “MaxMara” mark, for which it already enjoys federal registration in China in an array of classes of goods/services, including Class 25 (which extends to garments and accessories).
In siding with MaxMara, the CTMO held that because the beginning of Hangzhou’s proposed trademark is the same as MaxMara’s already-registered marks, and that pronunciation and overall appearance of the two marks are very similar, the two marks are “confusingly similar.” As a result, the CTMO refused to register Hangzhou’s “MaxIMazo 玛克斯玛佐” mark.
The decision is a noteworthy one, particularly given that the two marks at issue are quite a bit different in their entirety. According to HFG Law, the ruling “grants a reasonable scope of protection to the trademark ‘MaxMara’ against a trademark that is not identical, and therefore, enlarges the scope of protection.”
This outcome - and the heightened level of protection provided as a result - is also significant in light of the widespread cybersquatting (the act of registering, selling or using a domain name with the intent of profiting from the goodwill of someone else's trademark. It generally refers to the practice of buying up domain names that use the names of existing businesses with the intent to sell the names for a profit to those businesses) and other bad faith filing practices that occur in China, which most commonly target non-native brands.
As HFG Law further notes, the matter at hand demonstrates that “it is the front part of the trademark (“Max” in this case) that is regarded as crucial in assessing the similarity and reputation on the market.” This is something to keep in mind, brand owners, when policing unauthorized uses of your trademarks in China.