Tommy Hilfiger invalidates trademark piggybacking on its iconic flag logo in actual use

Facts
Decision

As a rising fashion brand in China, Tommy Hilfiger has been constantly challenged by an increasing number of copycats. Infringers usually register a mark that bears some resemblance to Tommy Hilfiger's word or device marks and deliberately alter the mark in actual use by highlighting the TOMMY part or colouring the device part to heighten the resemblance.

Facts

A local Chinese company acquired from a third entity through assignment a registered trademark for Figure 1 (trademark 12396976) in respect of "girdles (clothes)". Tommy Hilfiger has no trademark registration for its flag logo (Figure 2) in respect of "girdles (clothes)". The Chinese company had been using the mark in a coloured form so that it mimics Tommy Hilfiger's flag logo. Tommy Hilfiger initiated an invalidation action against the mark and successfully invalidated it on the grounds of prior use and the similarities between the designated goods of the disputed trademark and its cited trademark.

Figure 1: The disputed trademark in black and white

Figure 2: Tommy Hilfiger's flag logo

The visual appearances of the disputed trademark and Tommy Hilfiger's cited device were distinguishable. However, if the black and white mark was coloured in exactly the same way as Tommy Hilfiger's flag logo (Figure 3), the similarity of the two marks would sharply increase.

Figure 3: A coloured form of trademark 12396976 in actual use

The registrant of the disputed trademark also designated the trademark for use on "girdles (clothes)", which is categorised in a different subclass from that of Tommy Hilfiger's designated goods ("apparel"), despite being highly relevant in the fashion industry. The registrant's intentional choice of goods aimed to reduce the possibility that the designated goods of its disputed mark and those of Tommy Hilfiger's cited mark would be found to be similar.

The case considered:

• the adverse party's actual use of the disputed mark in the same colour as Tommy Hilfiger's cited mark;
• Tommy Hilfiger's use of the mark on "girdles (clothes)"; and
• the relevance of "girdles" and "apparel" in the fashion industry.

Decision

Although the China National Intellectual Property Administration (CNIPA) dismissed the invalidation, both the Beijing IP Court and the Beijing High Court overturned the CNIPA's invalidation decision and ruled in favour of Tommy Hilfiger, citing Articles 30 and 32 of the Trademark Law. The court decisions are based on the findings that:

• Tommy Hilfiger's mark is reputable on apparel in China;
• "girdles (clothes)" will be deemed as a similar item to "apparel";
• Tommy Hilfiger's mark had acquired certain influence on "girdles" through extensive use in China; and
• the adverse party had deliberately acted in bad faith.

On 30 March 2020 the court of appeal handed down its decision.

On 17 June 2020 the CNIPA promulgated the Criteria for Determination of Trademark Infringement, in which Article 24.1 provides that:

The registrant of a registered trademark without specifying any colours may colour his/her trademark freely. However, where the colouring aims to free-ride other's registered trademark in respect of same or similar goods/services so that the coloured trademark is similar to the latter's registered trademark, thus is likely to cause confusion, it falls under the trademark infringement act as prescribed by Article 57.2 of the Trademark Law.

There is no way to know whether the CNIPA took note from this particular case, but Tommy Hilfiger could definitely fall back on Article 24.1 to enforce its iconic flag logo in future trademark infringement cases, which is a welcome development.

For further information on this topic please contact Ye Cai at Wanhuida Intellectual Property by telephone (+86 10 6892 1000) or email (caiye@wanhuida.com). The Wanhuida Intellectual Property website can be accessed at www.wanhuida.com.