PIRELLI wins the "2022 Shanghai Excellent Trademark Case"

Pirelli trademark invalidation case was rated as "2022 Shanghai Excellent Trademark Case" in the online competition organized by the Shanghai Trademark Association in July-August 2022. Pirelli case received 9,421 votes obtaining the first place, the second-place case received 7,505 votes, and the third-place case received 6,584 votes. HFG had the privilege to represent PIRELLI in this case.

Pirelli or 倍耐力（BeiNaiLi in Chiense）is a tire company from Italy and its trademark has been identified as well-known trademark on “tires” in multiple decisions in China. With the HFG’s assistance, an invalidation decision against trademark registration No.11866809 for “倍耐特” (BeiNaiTe in Chinese) was made by the CNIPA to fully support the request of PIRELLI by directly granting the cross-class protection for PIRELLI’s Chinese well-known trademark “倍耐力”（BeiNaiLi).

The Disputed Trademark was filed on December 10, 2012 and registered on May 20, 2014. In the present case, the invalidation was initiated only on May 7, 2020 when the Disputed Trademark had already been registered for over 5 years. According to “5-year invalidation limitation rule”, the invalidation can only be granted if the trademark to be protected is recognized well-known.

The owner of a well-known trademark is able to break such 5-year limitation rule in certain circumstance and in particular the following 3 elements are important:

1. the protected trademark constitutes the well-known trademark.

2. the disputed trademark is a “copy, imitation or translation” of a well-known trademark.

3. the disputed trademark is filed in bad faith.

In the captioned case, actually there are 30 trademarks under the name of the applicant of the disputed trademark. The number is not so big nor is there any obvious trace of copying other brands, meaning it is not a typical trademark squatter.

Under such circumstances, the proof of its bad faith is quite essential.

HFG proved the bad faith of the applicant by following aspects:

Reputation: the Applicant's trademark “PIRELLI/ 倍耐力 ” has reached the level of being well-known to the relevant public and enjoyed high distinctiveness.

Similarity: the disputed mark is only one Chinese character different from the cited mark (Te instead of Li), and the goods of the disputed mark “tire repairing composition; etc.” are closely related to “tire” of well-known trademark.

Competitors in the same industry: “Shanghai Fushuo Auto Parts Co., Ltd.”, the owner of the disputed trademark, specializes in “auto parts” .

Repeated Applications: the disputed trademark owner repeatedly copied the cited trademark 倍耐力 (Bei Nai Li) and applied for multiple identical trademarks of 倍耐特(Bei Nai Te).