“Issey Miyake”, a fashion brand, was found by Mr. Issey Miyake, who is the master of clothing and famous for the special design of the clothing. Numerous people know about the design of this brand. In China, the translation of Issey Miyake is Sanzhaiyisheng and it enjoys frame.

Recently, a trademark case about “Sanshengyizhai” has aroused people’s attention.

BACKGOROUND

Shenyang Sanshengyizhai Decoration Design Co., Ltd. applied to trademark “Sanshengyizhai” （hereinafter referred to as the disputed trademark）on May 2, 2017. On August 28, 2018, the disputed trademark was registered, covering the item “architecture model” in Class 16.

MIYAKE DESIGN STUDIO filed an invalidation request in respect of the goods in Class 16 on December 10, 2019, claiming the registration of disputed trademark infringed Article 4, 7, 9, 10, 13, 32, 44 and 45 of Trademark Law in China.

The applicant held that the disputed trademark is the plagiarism and imitation of the applicant's well-known trademark, which can easily mislead the public and may cause damage to the applicant's interests. The respondent had obvious subjective malice that clung to the reputation of the applicant's trademark, and its registration behavior was deceptive, having a negative impact on the market order, and violated the principle of good faith.

DECISION

According to the applicant’s argument, CNIPA believed that the main disputes of this case are as follows.

1. Whether the registration of the disputed trademark infringed on the name right of Issey Miyake.

2. Whether the respondent copied or imitated the applicant’s well-known trademark.

3. Whether the disputed trademark is deceptive and has a negative impact. And whether the registration of the disputed trademark was acquired by fraud or other improper means.

After the examination, CNIPA held that before the application date of the disputed trademark, Mr Issey Miyake has enjoyed a high reputation for his design. As a design company, the respondent should know the name. The disputed trademark is "Sanshengyizhai", which is highly similar to Mr. Issey Miyake's name in Chinese. It has infringed Mr. Issey Miyake’s name right.

Since the materials submitted by the applicant could not prove that the applicant’s prior trademarks “Sanzhaiyisheng” No. 1140811 and No. 542956 were well-known trademarks, the use of the disputed trademark may not CNIPA believed that the respondent didn’t copy or imitate the well-known trademark.

CNIPA deemed that the disputed trademark wasn’t deceptive and didn’t have a negative impact. Meanwhile, the registration wasn’t acquired by fraud or other improper means.

According to Article 32 of Trademark Law “The application for trademark shall not infringe the existing prior rights of others, nor shall it preemptively register the trademarks that others have already used and have certain influence by improper means.”, the disputed trademark has infringed other person’s name right. Hence, CNIPA stated that the disputed trademark was invalid.

OUTLOOK

The right of name refers to the right of a natural person to decide, change and use his or her name. The main content of the name right includes the right to determine the name, the right to change the name, and the right to use the name.

When CNIPA hears cases involving conflicts between trademark rights and name rights, it will consider factors such as the popularity of the holder of the prior name rights, and whether the disputed trademark and the name of claiming the prior name rights are likely to cause the public to establish the connection. CNIPA will examine and make reasonable judgments on the evidence which may prove the popularity of the name right’s holder.

In this case, we can know that although the text of the disputed trademark is different from the name of the name right’s holder, it shows the main characteristics of the other person’s name and the relevant public will make the connection with the owner of the name.

The registration and use of the disputed trademark on the approved goods may cause the relevant public to associate it with Mr. Issey Miyake and damage his name rights. In addition, there is a correlation between the industry in the owner of the disputed trademark and the field in which the name right holder is involved. Therefore, the registration of the disputed trademark has constituted a circumstance that undermines the prior name rights of others as referred to in Article 32 of the 2013 Trademark Law, and violates the provisions of Article 32 of the 2013 Trademark Law. CNIPA stated the disputed trademark was invalid.

The disputed trademark owner aimed for a free-riding of Issey Miyake, but it failed. MIYAKE DESIGN STUDIO has won the fight and protected its interest in China. The official departments of China are cracking down on IP infringement and IP cybersquatting. The victory of the case will encourage more foreign IP holders to protect their interests in China.