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GossIP Newsletter – June/July 2022 – Editor’s Pick – Trademark



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Dear readers,

You might have noticed some changes in our GossIP: to give you a
more complete insight, from now on, beside the Newsletter, we will
publish in our Magazine a summary of the best articles from the
last months, not only China related cases.

As you can see, this summer edition is very rich!

We start with one of the most iconic and famous perfume of all
the times, Chanel N. 5. Released in 1921, this eau de parfum is
still synonymous with sophistication and luxury. And of course, one
of the most copied. With these premises, we expected that the case
was easily won by Chanel, but we had a surprise instead.

And also surprising is the result of the case Twitter vs VV
Technology, a Singaporean startup which applied for a trademark
registration consisting of a yellow flying bird, with an eye, used
for online shopping and food delivery services.

The Metaverse is becoming a very hot topic for IP: On April 22,
2022, Hangzhou Internet Court published a decision on the very
first NFT intellectual-property infringement case in China. Even
though the legislation for the NFTs is still far from being
settled, there are some legal principles that can be applied to
protect IP rights.

We can’t avoid mentioning a successful case for the famous
Italian tire manufacturer Pirelli, represented by HFG: we managed
to win a case by invalidating a Chinese Trademark which has been
registered over 5 years.

One quick raid on IP in Asia to tell what happens to trademark
law in South Korea, and we land to the last article, which has been
also published on WTR and gives an explanation to a question often
asked and never answered before: why does CNIPA not suspend
trademark procedures in cases of pending prejudicial procedure?

Hot Summer, hot articles, new GossIP. Enjoy the reading, and
remember that we are open for holidays! While you relax, we take
care of your IP rights.

Chanel N.5: bottle shape is protected, packaging no

Chanel’s N° 5 iconic eau de perfume was released
in 1921 and has become quickly synonymous with sophistication and
luxury. Since then, it has suffered many attempts of imitation and
today we will go through one of the last of these attempts, N°
9 Flower of Story.

Presumably the inspiration for Chinese fragrance producer Yiwu
Story of Love Cosmetics Co., Ltd. (hereinafter
“Defendant”), who’s N°9 perfume looked
surprisingly similar in both its packaging and branding

In 2019, Chanel filed a lawsuit against Yiwu Story of Love
Cosmetics Co., Ltd. (hereinafter “Defendant”) in front of
the Shaanxi Intermediate People’s Court citing unfair
competition under Art. 6 of PRC AUCL, claiming Defendant’s
perfume being similar to Chanel’s iconic fragrance was enough
to cause consumers’ confusion.

In 2020, Shaanxi intermediate people’s court ruled
that the trademark design of the two perfumes had obvious
similarities, so that consumers could mistakenly connect
Defendant’s perfume with Chanel. Therefore, the court decided
that Defendant shall immediately stop selling N°9 perfume and
pay Chanel RMB 600 thousand for compensation.

1220890a.jpg

The 1st instance court found that the evidence provided by
CHANEL proved that the CHANEL No. 5 perfume has acquired certain
influence in Chinese market, and both the product bottle and outer
packaging box are distinctive in their designs. Also, the product
bottle and packaging boxes of the Defendant are very similar to the
CHANEL No. 5 perfume.

The court explained that:

“The letters on the outer box of the infringing goods
are not consistent with Chanel No. 5 perfume, but their color
scheme and black lines outline are at the same position, the
position of the text markings, the size of the text ratio is highly
consistent, and the letters are less visually distinct for domestic
consumers who are native speakers of Chinese characters, and the
box of Chanel No. 5 perfume constitutes a close resemblance; in
addition, it is sold together with the perfume bottle contained in
the box, which is more likely to cause the relevant public to
misidentify.”

In 2021, the Defendant appealed to the Shanxi Province High
People’s Court. Arguments as below:

  • Consumers used the trademark “N°5” and
    “CHANEL” used on the perfume packaging to distinguish
    source of products, instead of perfume bottle or its design
    itself.

  • The perfume bottle of CHANEL is not distinctive. The Defendant
    provided evidence on the design of similar outer packaging box with
    black outlines and white based color, trying to prove CHANEL’s
    outer package is not distinctive.

  • The relevant public will not be misled due to the differences
    on the price of products and the wordings used on the package.

Interestingly, the 2nd instance court supported the
Defendant’s argument on the non-distinctiveness of the outer
packaging. On the one hand, the main identifying part of the
packaging and decoration is the black frame on a white background
and the arrangement of the text content on it.

To read the full article click
here

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.



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