Beijing High People's Court ruled that the Reg. No. 10378625
should be invalidated as requested
by Giacomini S.p.A.
With assistance of the legal team of Giacomini S.p.A. ("Giacomini") and their Italian legal counsels, CCPIT Patent and Trademark Law office represented Giacomini as the appellant in the appeal case Giacomini vs. CNIPA, with Giacomini (Hangzhou) Pipe Co., Ltd ("GHP") as the third party, regarding the administrative litigation of the invalidation action against trademark "嘉科米尼GIACOMINI". The Beijing High People's Court has rendered the decision of second instance recently, which decides to cancel the decision of the first instance made by the Beijing Intellectual Property Court and the decision of invalidation action made by the Trademark Review and Adjudication Board (TRAB, presently CNIPA). The final decision of this case finds the disputed mark has constituted the situations prescribed in Article 31 of the 2001 Trademark Law, namely, the disputed mark is a mark filed with the intent of registering other's prior mark with certain reputation, and it should be announced as invalid.
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| The disputed mark | The cited mark |
The Italian company Giacomini produces and sells components and systems for the distribution of heating, air conditioning and sanitary water for use in the residential, industrial and tertiary sectors. Founded in 1951 in San Maurizio d'Opaglio, Novara, Italy, Giacomini today has a turnover of 200 million euros, of which over 80% on foreign markets, 3 Italian production plants, 19 international organizations (including branches, partners and offices representative office). Giacomini entered the Chinese market in 2000, reaching a turnover of around 8 million euros in recent years. In 2015 and 2016 Giacomini was awarded the prestigious Panda D'Oro recognition as the Italian company with the greatest growth on the Chinese market for over 10 years and in 2017 the equally prestigious Green China award. Giacomini's investments made to date in China amount to over 20 million euros and will reach 30 million euros by 2021.
Giacomini is the owner of the trademarks GIACOMINI, 
, 嘉科米尼 and 
etc..
https://www.giacomini.com/en/products/multilayer-and-plastic-pipes
Just as the expansion of Giacomini products in China was starting, with flattering results and heralds of sure success, Giacomini found that GHP filed and registered the trademark "嘉科米尼GIACOMINI" Reg. No. 10378625, with the designated goods of "connecting hoses for vehicle water tanks; hoses for vehicle heaters; hoses made of textile materials; drain hoses; watering hoses; non-metallic hoses; non-metallic pipe sleeves; non-metallic reinforcing materials for pipes; plastic pipes; nonmetal pipe joint" in class 17. In December 2017, Giacomini lodged an invalidation action against the trademark No. 10378625 ("the disputed mark") with the TRAB, but the TRAB did not support the claims of Giacomini and ruled to sustain the registration of the disputed mark. The administrative litigation lodged by Giacomini with the Beijing Intellectual Property Court was not successful, either.
Source: Database of CNIPA
Facing the unfavorable decision of first instance, the legal team, which includes our trademark attorneys, the Italian legal counsel to Giacomini and the Giacomini colleagues, working on this case analyzed all the evidences in detail and firmly believed that the materials provided by Giacomini could prove the serious, effective and continuous use of the GIACOMINI trademarks on pipes, as the important composing parts of floor heating system, dating back to the year 2000, as well as the obvious bad faith of the third party's copying and pre-emptively registering the GIACOMINI trademarks. Therefore, after careful preparation and comprehensive consolidation of all evidences, Giacomini lodged the appeal with the Beijing High People's Court.
After examination, the court of second instance holds that the sales invoices, advertisement promotions, product catalogues and etc. in this case can prove, before the filing date of the disputed mark, the unregistered trademark "GIACOMINI" was used on pipes of floor heating system and gained certain influence. The disputed mark completely covers the original mark "GIACOMINI" which was prior used and gained certain influence, the two marks constitute similar marks. The goods plastic pipes, nonmetal pipe joints and etc. covered by the disputed mark are highly overlapping to pipes of floor heating system in terms of raw materials, manufacturing sectors, sales channel, target consumers and etc., so they constitute similar goods. The third party and the appellant are both in the business field of valves and pipes, so the third party should have known about the mark GIACOMINI. Under such circumstances, Beijing High People's Court held that "[GHP] and [Giacomini S.p.A.] are both business operators in valves and pipes industry, thus [GHP] should have known the prior trademark "GIACOMINI" [of Giacomini S.p.A.], which has certain influence, and that under such circumstance, the intention of GHP in applying for trademark registrations on goods such as junctions for pipes [not of metal] and plastic pipe can hardly be justified. Therefore, the trademark in dispute constitutes 'registration, in bad faith, of a trademark which is used by another person and enjoys certain reputation.' and should be invalidated" in accordance with Article 31 of the 2001 Chinese Trademark Law, namely, the disputed mark is a mark filed with the intent of registering other's prior mark with certain reputation, and it should be announced as invalid.
With the recent favorable verdict from the Beijing High People's Court on the trademark invalidation action, Giacomini trusts that they will have sustained support from the Chinese courts and law enforcement authorities in their fight against trademark filings and use in bad faith, and they will be in the position to fully protect their IP rights as well as their business partners and Chinese consumers in the future.
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