I. Facts
The Italian fashion house Furla SpA has obtained a recent victory in an opposition in China against a local competitor. Furla SpA was opposing the Chinese trademark “芙拉帝诺”(FU LA DI NUO) in class 25. The characters “芙拉” (FU LA), are used by Chinese consumers when referring to “FURLA”. Regrettably, the client had not secured this Chinese name through a trademark registration in China (a first-to-file system). However, Furla SpA was able to prove that “芙拉” (FU LA) had acquired such degree of recognition among the Chinese consumer as the corresponding Chinese name of the brand “FURLA” when related to goods of class 25.
II. The Decision
According to the Chinese law, when a right holder can establish aa corresponding reciprocity between a foreign and a Chinese name, both names can be alternatively used to opposed similar marks in either English or Chinese. Based on the evidence provided by Furla SpA, the China Trademark Office stated that the Chinese mark FURLA in class 25 had already acquired a high reputation. The Office then maintained that the public in China had already established a corresponding relation between the client’s English mark and the Chinese mark “芙拉” (FU LA). Eventually, the Office concluded that the hostile mark “芙拉帝诺”(FU LA DI NUO) was similar the cited mark “FURLA” and its application was rejected to avoid confusion of the relevant public.
III. Conclusion
The case teaches right holders to make intense use of their Chinese name when marketing their products in China. In case such name’s registration as a trademark has been neglected, such use will be the only way for the owner to either prove this unregistered mark well known status (and enjoy independent protection) or to be loosely associated with the corresponding Latin mark duly registered in China.
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