The High People’s Court of Guangdong Province has recognized the BVLGARI / 宝格丽 trademark as a well-known trademark and granted cross-class protection.
Between 2013 and 2014, the TASKIN group of companies (德思勤) used the BVLGARI (宝格丽), Baogene and BVLGARI Apartment (宝格丽公寓) trademarks for its commercial property sales service. The use included the use of these logos in advertising and the images of luxury jewellery on the website. In addition, the registration of the BVLGARI trademark (宝格丽) in trademark class 36 (entrusted administration, trusteeship).
In 2014, the owner of the original BVLGARI trademark filed a lawsuit against TASKIN with the Shenzhen Intermediate People’s Court, claiming compensation of RMB 20 million for trademark infringement and unfair competition. The Shenzhen Intermediate People’s Court ruled that TASKIN must pay approximately RMB 1 million in compensation.
Both parties appealed to the Guangdong High People’s Court. The court ruled that the BVLGARI trademark in class 14 (ornaments, jewellery and watches) has a certain reputation and is therefore a well-known trademark which should enjoy cross-class protection. It was decided that TASKIN had to pay a compensation of RMB 3 million.
The decisive factor was whether the trademark BVLGARI was a well-known trademark as only a well-known trademark can be protected from the usage of that very trademark in other trademark classes, than what the original trademark is registered in. The well known trademark status can only be recognized by the authorities and only at the request of the applicant. The recognition of a well-known trademark is primarily based on the principle of recognition as required so the applicant has to prove that its trademark enjoys certain famousness and is used by third parties in bad faith, which might lead to consumer confusion. Otherwise the authorities will not consider it necessary to recognize a well-known trademark status and thereby grant cross-class protection to the trademark.
Picture Author: Antonio Barella