Image: Furla

Furla was handed a recently-reported win in a trademark fight in China that provides some useful insight into how the national trademark office approaches arguments over “well-known” trademarks. The matter got its start in 2021 when the Italian fashion brand initiated a number of trademark opposition proceedings with the Chinese National Intellectual Property Administration(“CNIPA”), in which it looked to block an unaffiliated third party’s quest to register “CHRISFURLA” and 凯芙拉 (which translates to KAIFULA) for use on leather goods (in Class 18), and 付拉 (which translates to FULA) for use on garments (Class 25). In its oppositions, Furla argued, among other things, that its name and the Chinese transliteration of its name both amount to “well-known” marks in the Chinese market and should be protected accordingly. 

In addition to claiming that its marks benefit from a “high reputation” among Chinese consumers, counsel for Furla argued – and the CNIPA agreed – that the opposed marks should not be registered, as they are confusingly similar to Furla’s marks and used on goods that are similar to the ones offered up by Furla. Furla asserted that its marks – including those in Classes 18 and 25 – “have been widely protected as indicators of source in China since 2012 and are continuously being used” in the Chinese market.

The CNIPA determined that the “co-existence and use” of the three opposed marks in the market alongside Furla – which has been focusing on expanding its presence in the Chinese market since the early 2010s – would “easily cause confusion and misunderstanding among consumers” due to the similarity of the marks and the goods/services at issue. As a result, the CNIPA refused to register the marks, citing cited Articles 30 and 35 of the China Trademark Law. (Article 30 precludes from registration trademarks that are “identical with or similar to a trademark [that is] already registered by another person or [has been] given preliminary examination and approval for use on the same kind of goods or similar goods.” Meanwhile, Article 35 lays out the procedure for trademark oppositions.)

In terms of Furla’s “well-known” trademark arguments, the CNIPA found that the FURLA word mark and corresponding Chinese character mark (芙拉) have earned “well-known” status. It is worth noting, as Squire Patton Boggs attorney Paolo Beconcini did in connection with an earlier win for Furla, that under Chinese trademark law, “when a rightsholder can establish a corresponding reciprocity between a foreign mark and the Chinese [transliteration], both names can be alternatively used to oppose similar marks in either English or Chinese.” The CNIPA touched on that here, stating that “through long-term and widespread use and promotion, the ‘FURLA’ and ‘芙拉’ [marks] have already established a stable relationship and thus, both refer to FURLA company.” 

For a bit of background: Trademarks are generally recognized as “well-known” (i.e., marks that are known widely by the relevant public and that enjoy a relatively high reputation in China) in two ways – by way of a decision from the CNIPA and/or the Trademark Appeal and Re-examination Board or via a court finding in connection with a trademark lawsuit. Well-known status is gauged by considering factors (set out in Article 14), such as the level of popularity/awareness of the mark by the relevant sector of the public, the duration of use of the mark, the extent, duration, and scope of advertising and/or other media attention that features the mark, etc. Such status – which is determined on a case-by-case basis and can vary widely based on the marks and the goods/services at issue – brings with it a broader scope of protections for trademark holders in China.

THE BIGGER PICTURE: The CNIPA’s move to recognize the high reputation of both the “FURLA” word mark and the corresponding Chinese character mark is likely to be “helpful to support future oppositions, invalidation proceedings and/or infringement cases, and ultimately, to better crack down on trademark squatters’ illegal filings,” according to Kangxin Partners PC’s Minling Zhang. The outcome is noteworthy, per Zhang, as it is one of the latest examples of the application of “consistent examination criteria” when it comes to determinations about well-known marks, for which the requisite standards are “exceedingly high” and success for non-native companies is relatively low.

Going forward, the brands and their well-known marks are slated to be impacted by proposed amendments to China’s trademark law, which broadens the scope of protection to well-known trademark holders at home and abroad. The new Article 18 “expands the protection afforded to unregistered well-known marks under current Article 13 by explicitly prohibiting the ‘use and registration’ of reproductions, imitations, or translations of such marks that would mislead consumers into assuming a certain degree of connection between the mark and the well-known mark sufficient to cause dilution of the distinctiveness or damage to the reputation of the unregistered well-known mark,” according to Perkins Coie’s Scott Palmer and Shujun (Sue) Zhong. “It also expands the scope of protection for unregistered trademarks that are famous to the “general public” to unrelated goods/services.”