July 2, 2020
A well-known trademark is more strongly protected than average – even in China. The Beijing Supreme Court annulled the Chinese registration of a similar trademark that could be confused with the SAGA® trademark. The monitoring and determined defence of your trademark rights can produce good results in China as well, says Kolster’s Partner Jani Kaulo, who handled the case.
The SAGA® trademark of the fur auction company Saga Furs has achieved a significant victory in the Beijing Supreme Court. The court annulled the EASTSAGA logo trademark registered by a Chinese company, considering it to be confusingly similar with the previously registered SAGA® trademark. The court’s decision was the final word in a multi-stage trademark dispute that began in 2017, which also involved trademark infringement.
There are repeated attempts to exploit the quality reputation of the SAGA® trademark without permission on the major fur trade market in China, so Saga Furs’ trademark strategy includes active and long-term defence of its own rights and brand.
The trademark infringement was discovered in the regular trademark watch conducted by Kolster for its customer. A Chinese company founded in 2001, Beijing Eastsaga Garment Co. Ltd, had been granted registration for the EASTSAGA since 1969 logo trademark.
“We filed for annulment of the trademark registration on the grounds of the trademark resulting in a risk of confusion among consumers with the SAGA® trademark previously registered by Saga Furs in China”, Kaulo says.
The Chinese Trademark Office approved the claim for annulment, but the Chinese company appealed the decision to the Beijing IP Court. The IP Court dismissed the appeal and upheld the annulment decision. The company continued to appeal to the Beijing Supreme Court – which has now ruled that the Chinese company’s trademark registration has been definitively annulled.
“In addition to the positive outcome, what is significant about this decision is the court’s confirmation that SAGA® has gained a certain reputation in China through long-standing and widespread use, and is thus a highly distinctive trademark on the Chinese market”, Kaulo says.
The resolution of the trademark dispute and demonstrating strong distinctiveness to the court required evidence of the use of the SAGA® trademark in China as well as arguments regarding the reputation that the trademark has gained on the Chinese market.
“Collecting and presenting comprehensive evidence material of use to the authorities was crucial for the outcome.”
Alongside the trademark invalidation process, Kolster also approached the Chinese company with a warning letter for trademark infringement. The company had started extensively using the SAGA 1969 and EASTSAGA since 1969 logo trademarks for the leather and fur garments it was selling in 2018 – combined with a misleading and long operating history dating back to 1969.
It also falsely claimed that Saga Furs Oyj is its international partner. The company used the slogans “SAGA, the eternal classic” and “Choosing SAGA to define your own classic life − by SAGA clothing” in its advertising, infringing Saga Furs’ trademark rights in China.
“We approached the Chinese company with a warning letter, urging them to remove all infringing material and trademarks from the company’s website, marketing materials and the products themselves.”
After receiving the warning letter, the Chinese company first denied being guilty of trademark infringement. The company refused to remove the material from the Internet on its own initiative.
“However, we were able to remove the sales ads on Alibaba’s e-commerce sites through our ‘take down’ requests that were based on our customer’s previously registered trademarks. Alibaba’s IPR control department removed the ads after receiving the request and appropriate justification.”
Getting the infringing material off the Chinese company’s website required more than one warning letter to be sent.
“A so-called administrative procedure to end the infringement had already been started in the matter. At this point, the company removed the material itself before the authorities would have intervened. An administrative procedure is a good way to stop infringement quickly and at the lowest possible cost.”
Saga Furs has been operating on the Asian market for more than 30 years, and about half of the company’s sales are in China, which is known as a traditional fur country. The market is important, so Business Director Tia Matthews, who is responsible for the fashion business and trademark portfolio of Saga Furs, is pleased that defending the brand has paid off in China.
“High product quality and sustainable development are important elements in Saga Furs’ operations and brand. It is important to us that consumers are not misled by false images. That is why every victory in defending our own brand is valuable to us. We systematically address all infringements that come to our knowledge”, Matthews says.
Saga Furs’ trademark portfolio has been managed by Kolster since 2011. Especially in recent years, there has been active cooperation in monitoring and defending rights on the Chinese, European and US markets.
“The case that has now been closed is a good example for other companies, too, of how long-term and systematic enforcement of rights can be an effective defence against counterfeiters and those seeking to take advantage of your reputation even in China. China’s IP court system works well, and the decisions are well-reasoned and consistent”, Kaulo says.
Kolster is one of the most experienced IP specialists in Europe. We offer a one-stop-shop solution for all IP services for protecting, exploiting and defending your inventions, designs and brands.