8th February 2022 - Alessandra Maxine

Brunello di Montalcino is one of the most well known and loved wines in Italy and the fame of this wine has spread to other jurisdictions.

In May 2021, Consorzio del Vino Brunello di Montalcino (‘Consorzio’), a prestigious Italian wine company, obtained favorable decisions from the Chinese Trademark Office (“CNIPA”) to invalidate three trade marks on the grounds of “bad faith”.

Trademark No. 19499293, No. 19478661, and No. 19480760 for “Brunello di Montalcino” in classes 21, 18, and 35 (‘Disputed Trade Marks’) were cancelled although the applications were made in different classes to that of Consorzio where “wine” was designated in class 33. The Disputed Trade Marks were applied for in 2016 and registration in China was granted in 2017.

The decisions were issued by the CNIPA within a timely period of eight months and were made in favour of Consorzio.

The principle of non-retroactivity was applied to the trade marks considering that the registration date of the Disputed Trademarks was prior November 1, 2019.The Trademark Law of 2019 applied to the procedural issues of the cases while the Trademark Law of 2013 applied to the substantive issues.

The Decision

The words of the decision can be read below:

“In this case, the evidence submitted by Applicant is sufficient to prove the reputation of “Brunello di Montalcino” on wines on the date before the Application date of Disputed Trademark.

The identical trademark filed by Respondent could not be simply deemed as a coincidence. The Respondent also filed large numbers of trademarks in Classes 9, 14, 18, 21, 25 and other classes, including “Oliver Peoples”, “TOMMASI”, “pradalupo”, “ 普拉达露波 ”, “Costa Rossa”, “FILIPPO GABRIELE”, “RICCARDO TISCI”, “di San Leonarda” that are similar to some famous brands or fashion designers.

However, Respondent failed to make an explanation on these trademarks. Such behavior of Respondent cannot be recognized as justified behavior based on good faith.

Based on the above, the Office holds the aforesaid behavior is obviously beyond the normal production and operation needs and take a free ride on famous brands for improper interests, which violates the principle of good faith disturbs the trademark administration order, and impairs the fair competitive market.

The registration of Disputed Trademark has violated Article 44.1 of Trademark Law of 2013.”

Trademark Law 2019

China is acting to address “bad faith” trade marks. To reduce trade mark squatting, the Chinese Trademark Law of China (2019 Version) (‘Trademark Law 2019’) introduced:

• an intent to use requirement; and
• a good faith requirement.

The articles in the Trademark Law 2019 state:

Article 4

A malicious application for trademark registration not filed for the purpose of using the trademark shall be refused.

Article 7.1

The good faith principle shall be upheld in the application for trademark registration and in the use of trademarks.

Article 44.1

A registered trademark shall be declared invalid by the Trademark Office if […] its registration is obtained by fraudulent or other improper means. Other entities or individuals may request the Trademark Review and Adjudication Board to declare the aforesaid registered trademark invalid.

Our Trademark Lawyers in Sydney are Experts when it comes to Registering Trademark or Trademark Opposition Process in Sydney

 

Alessandra “Max” Maxine, Digital Administrator

Contact W3IP Law on 1300 776 614 or 0451 951 528 for more information about any of our services or get in touch at law@w3iplaw.com.

Disclaimer. The material in this post represents general information only and should not be taken to be legal advice.