Discussion on the "Cross-Class" Protection of Well-known Trademarks from the "BVLGARI" Trademark Infringement Case

As an Italian company operating jewellery, Bulgari has more than a hundred years history. Based on the rights of protection requests, Bulgari and Bulgari Shanghai are based on Hunan Desiqin Company, Shenzhen Desiqin Property Company, Shenzhen Desiqin Industrial Co., Ltd., filed a lawsuit in the court of first instance for infringing its trademark right. On December 31, 2019, the Guangdong Provincial Higher People's Court rectified some of the facts that the original trial court found were unclear and handled improperly, and issued a judgment on the case of infringement of trademark rights and unfair competition.

 

The case involved cross-class protection of the world's top ten luxury jewelry brands "BVLGARI". "BVLGARI" is a well-known trademark in the category of jewelry and watches. It has a large international influence and is the first cross-class protection in China. According to the needs of the case, in the domestic civil case, the “BVLGARI 宝格丽in Chinese” trademark was first recognized as a well-known trademark on the 14th category “jewelry and watches”, and the cross-category protection was applied to the defendant. The use of logos such as " BVLGARI APARTMENT宝格丽公寓in Chinese" in sales constitutes trademark infringement, which protects the legitimate rights and interests of foreign jewelry luxury brands in a timely and comprehensive manner. It is not difficult to see that the case has a good judgment orientation and demonstration effect in terms of strengthening the protection of well-known trademarks and guiding the public to respect intellectual property rights. When the right holder sues with multiple trademarks as the basis of rights, when the "common trademark" is not enough to stop all the infringements infringed, it is still necessary to determine whether the relevant trademark is well-known and to perform cross-class protection through well-known trademarks, so as to comprehensively stop accusation of infringement.

 

When the plaintiff's evidence is difficult to determine the losses suffered by the defendant's infringement or his infringement gains and the trademarks involved in the case can apply the license fee in this case, the amount of compensation shall be determined according to law. In determining the amount of compensation in the case, factors such as the fame of the trademark in the case, the nature of the alleged infringement, the subjective infringement of the infringer, and the reasonable cost of the right holder's rights protection, etc., were corrected to greatly reduce the judgment of the first instance, which greatly increased the compensation amount. Meanwhile, the limit of profit contribution of well-known trademarks in the development and sale of the responded commercial housing under cross-class protection was fully considered. The trademark was not directly used as the overall name of the real estate, but was used only in the sub-category of the commodity. Cross-category connection, so it does not exceed the statutory maximum due to the more profitable development and sales of commercial housing, and finally uses the statutory maximum of 3 million yuan as the compensation amount in this case, which better balances the relevant interests of both parties and has achieved good results. Legal effects and social effects demonstrate China's protection of the world's top luxury jewelry brands.