In recent years, with the remolding and development of domestic brands such as "Hui Li" and "Feiyue", the classic red and blue shoes full of youthful imprint return to consumer vision. Do "Jai Back" and "Leap" come from the same family? How on earth is the trademark dispute between the two? Many consumers are confused, and even some people in one side of the official flagship store to consult the other side of the goods.

In fact, in the fierce market competition, the two sides have also produced a lot of disputes in the trademark. As one example, around 913590, "leap FEIYUE and figure" trademark (hereinafter referred to as the trademark involved) caused by the trademark rights to cancel the review of administrative dispute, Shanghai warrior shoes co., LTD. (hereinafter referred to as boomerang company) and production "the first leap" brand shoes Shanghai born dragon shoes co., LTD. (hereinafter referred to as dragon company) once in court, the case with the new progress recently, back to the company about the cancellation of the trademark registered in footwear products involved in the request ultimately failed to win court support.

Round One：Shenglong company holds the core category

The reporter learned that the "Hui Li" brand can be traced back to the establishment of a rubber goods factory in Shanghai in 1927, the "Hui Li" trademark was first applied for registration in 1935, in May 2000, Shanghai Huayi (Group) Company (hereinafter referred to as Huayi Company) established Hui Li Company, engaged in the "Hui Li" brand of sports shoes manufacturing and sales. "Feiyue" brand was born in 1958 in Shanghai, designed and produced by Dafu Rubber Factory. Later, Dafu Rubber Factory entrusted Shenglong Company with the rubber shoes business, and authorized Shenglong Company to use the trademark "Feiyue" without authorization registration, which foresaw the dispute between the two companies in the future.

The trademark involved by the Zhejiang Taizhou Feiyue sewing machine group company in March 30, 1995 to submit the application for registration, December 14, 1996 was approved to register and use in the baby clothing, swimsuit, raincoat, hat, socks, gloves, ties, scarves, football shoes and other 25 categories of goods. On August 26, 2004, the trademark registrant involved in the case changed to Feiyue Group Co., Ltd. (hereinafter referred to as Feiyue Company).

On September 21, 2016, Feiyue Company signed the trademark authorization agreement with Shenglong Company, and authorized Shenglong Company to be responsible for the rights protection of the involved trademark and the production and sales of related commodities from October 1, 2016 to September 30, 2021.

In 2016, the "Hui Li" brand and the "Fei Yue" brand online flagship stores of Sheng Long and Hui Li Company respectively started to operate, and their respective development has been remarkable. However, an event happened in 2017, which broke this harmonious situation -- the trademark "Feiyue" of Dafu Rubber Factory was transferred to Hui Li Company after several twists and turns. On December 19, the same year, Feiyue Company filed a revocation application for the trademark involved in the case without using it for three consecutive years.

After hearing the case, the Trademark Office of the State Administration for Industry and Commerce (hereinafter referred to as the former Trademark Office) considered that the evidence of the use of the trademark involved in the case submitted by Feiyue Company during the period from December 19, 2014 to December 18, 2017 (hereinafter referred to as the designated period) was invalid, so it made the decision to revoke the trademark involved.

Unconvinced, Feiyue Company applied to the Trademark Review and Adjudication Board of the former State Administration for Industry and Commerce (hereinafter referred to as the original commercial judge) for a review in 2018, claiming that it had been using the trademark involved after registering it and had made it famous to some extent. It was malicious of HuiLi Company to apply for revoking the trademark involved and requested to maintain the registration of the trademark involved.

After the trial, the state intellectual property office (according to the central deployment institutions reform, the original contractor judges is exercised by the state intellectual property office of the relevant responsibilities) think leap company submit a part of the evidence is used to effectively, make the trademark involved in football shoes goods shall maintain, in a raincoat and other approved re-examination decision of commodities shall be revoked.

The company refused to accept the above review decision, filed an administrative lawsuit to the court, but its appeal failed to get support.

Round two: The company obtained other class registration

After the termination of the above dispute, the dispute between the two sides over the "Feiyue" trademark has not ended.

In recent years, the company has repeatedly applied for the registration of trademarks such as "Feiyue" and "Feiyue 1931" in the 25th category of commodities. Shenglong and Shanghai Dafu Rubber Co., Ltd., which has the same shareholder, did not relax their vigilance. On the one hand, they dealt with the revocation lawsuit and on the other hand, they strengthened the layout of the trademark "Feiyue". On June 9, 2020, Shenglong Company submitted the application for the registration of the trademark "Feiyue" No. 47083003, which is designated to be used on football shoes, sports shoes and other commodities. Two months later, Dafu also filed a trademark registration application for "Feiyue and Tu" containing the same graphic part as the trademark involved in the case in the category 25, and the designated products were almost the same as the trademark involved in the case.

Although in terms of the trademark registration process, the result of the registration of the above "Feiyue" trademark has not been decided yet, but the judgment of the second instance on the trademark involved in football shoes was maintained and other commodities were revoked has come into effect. At the same time, Shenglong Company has filed a separate lawsuit against the result that the trademark involved in the case was revoked in part of the goods, but its claim failed to win the support of the court, and the trademark involved in the case was eventually revoked in other goods other than football shoes.

Reporters have learned that the No. 44746364 "leap 1931" submitted by Hui Li Company on March 19, 2020 for registration has entered the registration announcement period, approved the use of goods for baby clothes, shoes, hats and other products in the 25th category.

"According to the Trademark Law, if a registered trademark has not been used for three consecutive years without a valid reason, any unit or individual may apply for revocation. In this case, Hui Li Company applied for revocation of the involved trademark based on this provision. The provision is designed to activate the use of the trademark, avoid the waste of trademark resources caused by the idle use of the relevant trademark by the trademark owner, and hinder others' proper registration and use." Shigeru view in the towers in Beijing lawyer at sun jing, dragon born between company and back to the company of "leap" trademark dispute is not an accident, may be linked to recent years "leap forward" brand has a lot to do with the profile of promotion in the shoes, the litigant submitted at the same time back to the company in the filed to cancel the "leap forward" for trademark registration, do not rule out back to the company for trademark revocation is involved for their application for registration on 25th goods "leap forward" and "FEIYUE" brand could clear the way. Under the background of market economy, both sides need to seize the market. As an important symbol to distinguish the sources of goods and services, the timely layout of the core trademark is the key to seize the market.

From: China Intellectual Property News     Date: March 17, 2021