Recently, Beijing High People's Court made a final judgment on an administrative review over the No.13354033 "NICHOLAS KIRKWOOD" trademark （the trademark in dispute） and held that the application for registration of the trademark in dispute had prejudiced the right of name of Mr. Nicholas Kirkwood, a famous British luxury shoe designer, denying the appeal of Metrocity （Italy） and upholding the first-instance judgment.

On October 12, 2013, Beibeikou （Beijing） International Trade Company submitted an application for registration of the trademark in dispute, which would be transferred to Metrocity later, requesting to be used on Class 9 goods such as sunglasses and glasses cases. Nicholas Kirkwood Company filed an opposition request to the former Trademark Office （TMO） of the State Administration for Industry and Commerce （SAIC） when the trademark in dispute was preliminarily approved and published. After examination, the TMO rejected the registration of the trademark in dispute.

The disgruntled Metrocity lodged a reexamination request to SAIC's Trademark Review and Adjudication Board （TRAB）。 The TRAB held that the registration of the trademark in dispute would prejudice Mr. Nicholas Kirkwood's right of name and made a decision to disapprove the registration. Metrocity then brought the case to Beijing IP Court, claiming that the products including sunglasses and glasses cases on which the trademark in dispute was designated to be used were different from shoes designed by Nicholas Kirkwood in function and sales materials. In addition, Nicholas Kirkwood was not well-known in China prior to the application for registration of the trademark in dispute. The registration and use of the trademark in dispute in China had not prejudiced Nicholas Kirkwood's right of name.

During the administrative proceedings, Nicholas Company submitted the evidence, including the statement signed by Nicholas Kirkwood, media coverage on Nicholas Kirkwood himself and his multiple works and some past court judgments, to prove Nicholas Kirkwood is a renowned luxury shoe designer around the world.

After hearing, Beijing IP Court held that the registration application of the trademark in dispute had prejudiced Nicholas Kirkwood's right of name and rebuffed Metrocity's request.

Metrocity refused to move on and appealed to Beijing High People's Court. After hearing, Beijing High held that the evidence submitted by Nicholas Company can prove Mr. Nicholas Kirkwood has been a world well-known luxury shoe designer prior to the registration application of the trademark in dispute. The products such as sunglasses on which the trademark in dispute was designated to be used are closely associated with luxury shoes in sales channels and among target consumers, which may readily confuse the relevant public. On top of that, Metrocity does not give reasonable explanations of its act of applying for the registration of the trademark in dispute which is identical to Nicholas Kirkwood's name. The registration application of the trademark in dispute has prejudiced Nicholas Kirkwood's right of name. Accordingly, Beijing High rejected Metrocity's appeal and upheld the first-instance judgment.（by Wang Jing）

(Source: CHINA INTELLECTUAL PROPERTY NEWS)