INTRODUCTION

Jimmy Choo, a global luxury fashion brand, is favored by many celebrities. Lots of people know about this brand because of women's shoes. Women's shoes are the core product of this brand. To protect its interests, Jimmy Choo is cautious about the safety of its trademarks in class 25. They are always taken action against the trademarks contained "CHOO."

（source from Jimmy Choo）

Here is a case about the trademark invalidation case for the trademark "BURCH CHOO" which contains "CHOO" so that drew the attention of Jimmy Choo.

Trademark "BURCH CHOO" (hereinafter referred to as the disputed trademark) No. 39140625 was applied by LEOPARD CLAW LIMITED on June 26, 2019, and approved in class 25 for the goods "Belt (for clothing); footwear; hats; hosiery; gloves [clothing]; ready-made clothing; clothing; scarves; knitwear [clothing]; shower caps."

On June 4, 2020, J. CHOO LIMITED filed an invalidation request against the disputed trademark claimed that the disputed trademark is similar to their existed trademarks "CHOO" No. 22368379, "CHOO" No.1443377, and "JIMMY CHOO" No. 22368380. The registration of the disputed trademark is deceptive and easily leads the consumer to associate this brand with JIMMY CHOO. And the applicant of the disputed trademark has many trademarks and sold them on the Internet, which is not for the purpose of actual use. 

DECISION

CNIPA believed that the disputed trademark completely contains the word "CHOO," and the meaning of the disputed trademark is related to the meaning of the cited trademarks. It constitutes similar trademarks. In addition, the goods of these trademarks are similar, such as clothing, hats, hosiery, shower caps, and scarves, which have certain similarities in terms of function, sales channels, and consumers. If the disputed trademark and the cited trademarks are used on the above-mentioned goods, it will easily make the relevant public believe that the applicant of the disputed trademark has a specific corresponding relationship with the applicant of the cited trademark. It will cause confusion and misunderstanding.

Hence, CNIPA stated that according to Article 30 of Trademark law, the disputed trademark and the cited trademarks have constituted similar trademarks and declared the disputed trademark is invalid.

OUTLOOK

Chinese trademark law applies to the first to file principle, which means it only protects the first trademark application/registration in the territory. It does not protect a trademark that is identical or similar to another's existed trademark on the same or similar goods in a later application. In practice, the judgment of whether a trademark constitutes a similar trademark shall also take the distinctiveness, popularity of the relevant trademark, the similarity of the goods, and other factors into account. The judgment standard is whether it is likely to cause confusion to the relevant public.

In this case, for the aspects of similarity of trademarks, the disputed trademark completely contains the cited trademarks, which constitute similar trademarks. For the aspects of similarity of goods, the goods items of the trademark in dispute are identical or similar to the goods items of the cited trademark in terms of function and use, constituting the same or similar goods. Taking the above factors into account, CNIPA considered that the co-existence of the disputed trademark and the cited trademarks in the market is likely to lead a confusion, and the trademarks mentioned above should be considered as similar trademarks used on the same or similar goods. From the trial of this case, when judging whether the relevant trademarks constitute similar marks, CNIPA also considered whether there was a relevance between the two trademarks and whether such relevance is likely to cause confusion and misunderstanding among the public as to the source of the goods. It reflects the original legislative intent to combat malicious registration and maintain the market order.