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    Articles

    Retrial on Administrative litigation concerning 3D Trademark for Parfums Christian Dior vs. Trademark Review and Adjudication Board


    2019/5/10|Articles

    Case Information:

     

    Case Code: No. 26 [2018], Retrial, Administrative, SPC

               No. 744 [2017], Second Trial (Final), Administrative, Beijing HPC

               No. 3047 [2016], First Trial, Administrative, Jing 73, Beijing IPC

    Retrial petitioner (plaintiff in the trial of the first instance and appellant in the trial of the second instance): PARFUMS CHRISTIAN DIOR

    Retrial respondent (defendant in the trial of the first instance, appellee in the trial of the second instance): Trademark Review and Adjudication Board of State Administration for Market Regulation

     

     

    On April 26, 2018, the 18th “World IP Day”, the retrial was heard by the Supreme People’s Court (hereinafter referred as SPC”).  The vice president of the Supreme People’s Court Ms. Tao Kaiyuan was the chief judge of the hearing. The trial was broadcast live nationally. (It reads better to have 3 short sentences rather than 1 long run-on sentence) 

    In March 2019, the Supreme People’s Court and CCTV selected Dior's 3D Trademark Case as one of the Top 10 Cases Promoting Progress of the Rule of Law in 2018.

    The applied trademark of this case is IR. No. 1221382 three-dimensional (3D) trademark “image.png”(hereinafter referred as “the applied trademark”). The applicant Parfums Christian Dior (hereinafter referred as “Dior”) filed the international application for an international registration for the trademark covering the following goods in Class 3:

    perfumery, perfumes, eau de parfum, eau de toilette, eau-de-cologne, perfume extracts, scented body milks, scented oils and lotions for the body, shower perfumed lotions, perfumed shower gels, bath lotions, scented gels for the bath, scented soaps, scented shampoos; make-up for the face, eyes and lips; nail and nail care products.

    After the international registration of the applied trademark, Dior applied for territorial extensions to Australia, Denmark, Finland, Britain, China and other countries through the World Intellectual Property Office (hereinafter referred as “WIPO”) pursuant to the relevant provisions of the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks.

    On July 13, 2015, the Trademark Office of the State Administration for Industry and Commerce rejected Dior's application for territorial extension in respect of all designated goods on the ground that the trademark lacked distinctiveness. Dior applied for a  review before the Trademark Review and Adjudication Board (hereinafter referred as “TRAB”). However, the TRAB did not support Dior.

    Then Dior filed an administrative litigation on the ground that the trademark during the international registration and the review procedure was confirmed to be a 3D trademark with a specific color, rather than a common 2D device trademark that the TRAB had treated it as. Thus, the basis on which the decision was made was obviously wrong. Moreover, Dior argued that this unique-designed applied trademark was basically identical with the NO.7505828 dimensional trademark, which had been approved for registration by the China Trademark Office (hereinafter referred as “CTMO”). Dior reasoned that as the applied trademark had been widely publicized and used in Chinese market and had been registered in multiple countries, the territorial extension to China should be approved. However, neither the court of the first instance nor the court of the second instance supported Dior’s arguments.

        Dior applied for a retrial with the Supreme People’s Court. On April 26, 2018, the 18th “World IP Day”, the retrial was heard in public for two hours by the Supreme People’s Court.  The vice president of the Supreme People’s Court Ms. Tao Kaiyuan was the chief judge of the hearing. The collegial panel pronounced in court that they would revoke the judgments of the first instance and second instance and the TRAB’s decision. The TRAB was ordered to make a review decision. The trial was broadcast live nationally.