A 12-year battle against a bad-faith trademark application

Akris Pret-A-Porter AG (Akris AG), a famous Swiss fashion company, is the owner of a series of trademarks using the word AKRIS, including the International Registration No.G637645 “PUNTO AKRIS” in Class 25 with territorial extension to China as early as 1995.

In 2003, a Hong Kong company called France Benny International Enterprise Group filed a trademark application for “A-K-R-I-S-” No. 3499689 in Class 25 covering goods “clothing, shoes, hats etc.”, which was preliminarily approved by China’s Trademark Office in January 2005. In 2014, the mark was assigned to a Shanghai company, Gu Bai Tools (Shanghai) and then again, in 2015, to another Hong Kong company, Akris (Hong Kong) Limited.

In 2005, Akris AG filed an opposition against the “A-K-R-I-S-” trademark based on its prior “PUNTO AKRIS” mark. In 2009, a natural person surnamed Liang filed a non-use cancellation action against the PUNTO AKRIS mark before the Trademark Office. Akris AG’s opposition was dismissed by the Trademark Office on 1 July 2009, but the situation was later reversed by the Trademark Review and Adjudication Board (TRAB) in the opposition review procedure concluded on 11 November 2013. However, on 3 March 2014, the Trademark Office’s cancellation decision against Akris AG’s PUNTO AKRIS mark based on non-use was upheld by the TRAB. Therefore, when Gu Bai Tools, the then owner of the opposed trademark, appealed before the Beijing First Intermediate Court against the TRAB’s opposition review decision disapproving the trademark application, it was inevitable that Akris AG would lose: it had no more prior right to support its opposition.

Bai Gang is a senior partner and Lei Yongjian is a partner at Wanhuida Peksung