Bulgari wins against "Bulgari Music Coffee"

It took years, but finally the Italian brand Bulgari is recognized as well-known trademark in China. This is how it succeeded in protecting the trademark despite the lack of registration for services as coffees and bars (class 43).

The case offers us the occasion to analyze two topics that often concern foreigner enterprises when it comes to trademark issues in China: the well-known recognition and the action of invalidations, which are – especially in this case – strictly connected.

Before jumping in the BULGARI vs Bulgari Music Coffee Case, it can be useful to provide with a short overview of the Chinese trademark system.

The invalidation is the procedure by which anyone who believes to be damaged by the registration of a certain trademark can obtain the cancellation of an existing registered trademark.

The invalidation procedure can be filed within 5 years from the registration date.  Whenever a trademark has been in registration for more than five years, it is still possible to file an invalidation, only when the plaintiff prove the two following requirements:

The above-mentioned scenario is what – summarizing – happened in the present case.

In 2013, Bulgari filed an invalidation against the trademark N. 6085778 filed in Class 43 on 2007/06/04 (“disputed trademark”), claiming the prior registration No. 3811212 (“the cited mark"). 

This, despite 5 years from the registration date already passed.    

Cited Trademark	Disputed Trademark

For this purpose, and for the reason explained above, in order to overcome the 5 years preclusion for the invalidation, Bulgari claimed that it should have deserved the well-known trademark protection and the bad faith of the Cai Qing He.   

Cai Qing He, trying to keep his registration valid and alive, submitted evidence showing the use of the attacked trademark on the services relating to the operation of the music café adopting the name BULGARI music café in Chinese 宝格丽音乐咖啡 (Bǎo gé lì yīnyuè kāfēi) and argued that the trademark obtained certain reputation.

According to the registrant, back in 2009 the time of the filing of the Disputed Trademark, Bulgari's cited trademark hadn't become well-known, therefore Bulgari's claims for well-known trademark protection cross class should not have been accepted.

In the first place the TRAB (currently CNIPA) accepted Ca Qing He argument. However, BULGARI appealed and the Beijing IP Court deemed that, according to the evidence of sales submitted by Bulgari, the company started to sell jewels in China in 2005.

This said, the trademark had become well-known among the Chinese consuming public way before the filing date of the disputed trademark.

The disputed trademark was composed by the combination of the Chinese characters 宝格丽音乐咖啡(Bǎo gé lì yīnyuè kāfēi), identical with the Chinese characters of the Italian trademark 宝格丽 (Bǎo gé lì).

Therefore, the Chinese registration was more than merely inspired by Bulgari’s trademark.

The IP Court recognized his bad faith in registering the subject trademark and the invalidation request.

In particular, according to the Court the disputed trademark has violated the article 13 (2) of 2001 China Trademark Law and the disputed decision should be rectified. Where a mark is a reproduction, imitation, or translation of a third party's well-known trademark that has not been registered in China in respect of identical or similar goods, which is likely to lead to confusion, such mark shall not be registered and shall be prohibited from being used.

Further confirmation of the conclusions from the first instance Court came from the Beijing High People’s Court. According to the Judges, when applying the well-known trademark protection clause, there are few elements that shall be taken into consideration:

As a consequence, the trademark “BALCARY MUSIC COFFE + DEVICE + BULGARI MUSIC COFFE” (in Chinese) was invalided since it was filed in violation of a priorly registered well-known trademark and misleading the consumers. Said what above, the Beijing High People’s Court concluded in favor of Bulgari.  

Take away from the present case