CASADEI: chi la dura la vince!

The Italian sentence “chi la dura la vince” means that perseverance overtime brings to success. We quote this sentence in the opening of the article because perseverance was the key to win the present case. The final decision from the highest judicial authority – the Chinese Supreme People’s Court – posed the word end to the legal dispute of the trademark CASADEI for the product of shoes in China.

CASADEI trademark was filed for registration in China in May 19, 1999 by an individual person called Zhao Shu Liang for the product of shoes and clothing. After examination the Chinese trademark office granted it for registration with the No. 1453353.

Once aware of the situation, Calzaturificio Casadei Spa in December 2002 initiated an action to invalidate the trademark on the ground of alleged bad faith of the applicant. The action was rejected in by CNIPA for the lack of sufficient evidence to prove the bad intention of the applicant.

While the action was still pending, in November 2004, Mr. Zhao filed the trademark again and obtained a new registration with the No. 4342026 from December 2008.

Later on, in June 2016 the Italian Casadei, still confident in the legal system, filed with the Chinese trademark office an application for cancellation due to 3 years consecutive non-use against both the applications in class 25.

Considering that in facts the trademark was not in actual and sufficient use, this time the non-use cancellation was partially accepted by the Trademark Office. Unfortunately, the cancellation did not relate the most important product –shoes- for which the applicant filed some evidence of use. Casadei appealed the decision in front of the Beijing IP Court challenging the evidence of use. 

In front of the first instance Court Casadei obtained a full success in February 2019, all the goods designated in the trademark were cancelled. The Court found the evidence filed by the trademark owner not enough to uphold the registration.

Nevertheless, the trademark applicant -Mr. Zhao- filed appeal with the higher authority, the Beijing High People’s Court, trying to reverse the first instance decision and to maintain its trademark valid. CASADEI defended in the appeal phase reinstating that the evidence filed were not proving a sufficient level of use of the trademark. Casadei succeeded again, the trademark was confirmed totally invalid with decision issued in October of 2019.  

In 2019 Mr. Zhang filed for retrial of the case in front the Supreme People’s Court in China trying to have the decision repealed also adding some new evidence of use. In 2020, the SPC issued the final decision on the non-use cancellation of the trademarks No. 1453353 and No. 4342026. 

It is worth mentioning that during the non-use cancellation procedure the parties tried to negotiate a transfer of the trademark, however an agreement was never found since the amount of money requested as price of the transfer was very high.

The actions against the trademarks No. 4342026 and No. 1453353 in class 25 were formally initiated in the name of cover entity. 

HFG IP and Bugnion Spa have jointly represented the fashion company in the legal battle.