Unitalen Client “Ferrari” Won the Administrative Litigation of First Instance to Protect its Graphic Trademark across Class as Well-known Trademark

February 17, 2020

Case Summary

As a world-renowned automobile company, Ferrari’s "跃马”( ) graphic trademark has been protected by Chinese priority in Class 12 for "vehicles" and other products as early as 1995. In September 2012, Smart International applied for registration of the disputed trademark on services such as "computer software design" in Clases 42 and was approved to register in 2015.

In response to the disputed trademark, Ferrari filed for the invalidation declaration with the CNIPA against the "跃马" graphic trademark and several other trademarks. In 2017, the CNIPA made a ruling and maintained the registration of the disputed trademark.

In response to this ruling, Ferrari filed the trademark administrative litigation with the Beijing IP Court, arguing that the "跃马" graphic trademark constitutes well-known trademark on automobiles and other products, and the registration of the disputed trademark is an imitated copy of the "跃马" graphic trademark. It is possible to mislead the public and damage the interests of Ferrari, which violates the provisions of Article 13, paragraph 3 of the 2014 Trademark Law, and the invalidation ruling should be revoked. Unitalen Attorneys at Law was entrusted by Ferrari to represent the case.

The Court’s Ruling

The Beijing IP Court had recently issued the first verdict and the “跃马” trademark registered by Ferrari Company in Class 12 for "vehicles" and other goods was recognized as a well-known trademark and the protection shall be extended across class to Class 42 "Computer Software Design" services. Therefore, the ruling of the CNIPA to maintain the registration of the disputed trademark in Class 42 was revoked.