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.
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.
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