01 December 2020

King & Wood Mallesons successfully defends Shanghai Story in its long-standing trademark dispute

Following the effectiveness of the decision rendered by China National Intellectual Property Administration (“CNIPA”) last month on the invalidation of the disputed No. 12676248 trademark "STORY OF SHANGHAI and its picture" between Shanghai Story Silk Development Co., Ltd. (“Shanghai Story Company”) and Hangzhou Lingjueding Clothing Co., Ltd (“Hangzhou Lingjueding”), Beijing Intellectual Property Court has also recently issued a first-instance judgment, rejecting another company's request for the invalidation of No. 10087133 trademark "Shanghai Story" of Shanghai Story Company to uphold the registration of the said trademark. After about a dozen comprehensive civil and administrative proceedings over nine years, Hangzhou Lingjueding finally gave up its unreasonable trademark ownership claims and reached a settlement with Shanghai Story Company. With relentless efforts, coupled with commercial arrangements in addition to litigation, Shanghai Story Company successfully maintained its own trademark rights at a reasonable cost.

"Shanghai Story" brand, created by Shanghai Story Company in early 2003, combines the unique Shanghai culture and fashion color elements. Integrating fashion, classics, art and taste, the brand focuses on the design and production of fashionable scarves, silk scarves, shawls and other silk fabrics.

Shanghai Story Company was blocked from registering the trademark "Shanghai Story" for many years and its franchisees had become its competitors by abusing its mark. In face of such challenges, Shanghai Story Company engaged King & Wood Mallesons (KWM) to assist the registration of the said mark in 2011. The mark was successfully registered after 6 years of application, litigation and opposition procedures. Later on, Shanghai Story Company filed an invalidation petition against the No. 12676248 registered trademark "STORY OF SHANGHAI and its picture" of Hangzhou Lingjueding and, at the same time, defended against the invalidation petitions filed by several companies against its No. 10087133 trademark "Shanghai Story". The invalidation petition against Hangzhou Lingjueding is a key case in a series of cases concerning trademark registration, invalidation, unfair competition and civil contract dispute in relation to the trademark "Shanghai Story". In the case, Hangzhou Lingjueding asserted that its use of the said trademark since 2011 had resulted in the coexistence of two trademarks in the marketplace, and it further invoked the provisions of Article 59 of the Trademark Law to justify its registration. Shanghai Story Company, based on its prior use and application of No. 10087133 trademark "Shanghai Story", claimed that the disputed trademark and the alleged trademark fell under the circumstances stipulated in Article 31 of the Trademark Law, requesting for an invalidation ruling on the alleged trademark and comments on the scope of application of Article 59 of the Trademark Law. This case, heard in Shanghai on 20 September 2019, was among the first batch of trademark invalidation cases orally heard by CNIPA outside Beijing. During the oral hearing, both parties fully expressed their opinions on their respective claims and the evidence produced by Hangzhou Lingjueding was cross-examined. Shanghai Story Company’s prior unfair competition and trademark registration proceedings provided a solid basis for the case in terms of evidence collection. In the end, CNIPA fully supported Shanghai Story Company's claims, determining that the evidence provided by Hangzhou Lingjueding could not prove that the trademark "Shanghai Story" was created by it and used by it beforehand, and that the provisions of Article 59 of the Trademark Law could not serve as a basis for trademark granting and ownership confirmation. Thus, the alleged trademark was declared invalid.

KWM represented Shanghai Story Company in this case. The KWM team secured a satisfactory outcome for the client by developing a professional and effective response strategy, and providing professional services and support in the presentation of evidence and other stages of the case.

In this case, the KWM team was led by partners Ding Xianjie, He Fang, and Yang Haoming.

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