To Susino Umbrella Inc., they might never forget the day when Spanish judges ruled in favor of them in a trademark dispute started 3 years ago. Susino was once registered as a trademark by a Spanish named Ricardo Arroyo Martinez for his own three years ago. The court finally supported Susino Umbrella's appeals and Martinez's registration was voided.

Without doubt, Susino's Victory gives a hand to this China's leading manufacturer and exporter of umbrella to further explore EU market. 

Trademark was registered by others

Huang Xiaoyuan, a legal manager for Susino Umbrella's lawsuit, has participated in this lawsuit since they decided to sue. According to Huang, the Susino Umbrella was founded in September 1995. Since then, Susino Umbrella has engaged in the design, manufacturing and distribution of various types of umbrellas. Up to now, Susino Umbrella has produced more than 10 million umbrellas each year, which were exported to more than 100 countries and regions.

In 2003, Susino Umbrella broke into the EU market. In the following three years, the Susino Umbrella and their products have gained recognition and popularity among customers in EU market. Unexpectedly their business has conquered a trademark squatting.

Martinez filed Susino as a trademark on class 18 for products of leather goods and umbrella, class 22 for fibre textile materials, class 25 for clothes, shoes and hats.

According to Huang, Martinez owns an umbrella factory in Spain and sells his umbrellas mainly to customers in EU. To Martinez, Susino Umbrella's arising is a real blow, and he decided to set a barrier to Susino Umbrella from entering EU market. 

Since then, Susino Umbrella initiated the suit against Martinez.

A costly victory

In January 2010, Susino Umbrella hired a France law firm to challenge the trademark Susino filed by Martinez on products of umbrella and sunshade. In November 2011, Susino Umbrella hired a British based law firm to challenge the dispute trademark on the Classes mentioned above.

Huang says that Martinez is familiar with the EU law system and has tried his best to keep this trademark for him own. On one hand, he challenged the evidences presented by Susino Umbrella, and on the other hand, he tried to solve this case in a peaceful way on the condition of being Susino's sole agency in EU market. "We won't easily give up and comprise, we have to stand up to fight for this dispute." says Huang.

In December 2011, The Office for Harmonization in the Internal Market (OHIM) revoked Martinez's registration. Martinez then sought reexamination and tried to challenge OHIM's decision, but denied by the Reexamination Board. In consideration of Martinez's no attempt to appeal, the trademark was finally given back to Susino Umbrella.

In Huang's eyes, it is a costly victory. Susino Umbrella has spent more than 1 million yuan to the lawyers, let alone the other expenditures and the potential economic loss due to the lawsuit.

The Martinez's case is not the first one Susino Umbrella has conquered. In December 2007, Susino Umbrella's American business partner registered Susino as a trademark for their own in the U.S. That case lasted for four years and ended up with a settlement that the trademark was returned to Susino Umbrella and will never interfere or defames Susino Umbrella's business in the U.S.

"These two cases have taught us profound lessons. Chinese companies must file trademarks before they decide to develop oversea markets. In the last two years, Susino Umbrella has spent more than 1 million yuan on trademark registration in more than 120 countries, including Spain, the U.S, Russia and Albania." says Huang.

Huang Hui, a researcher from Chinese Academy of Social Sciences and an IPR expert, pays close attention to the development of the case. He told CIP news that most countries in the world adopt the first-to-file system in protecting trademarks. "In that case, it will cost a lot for the original right holders to win back the trademarks. As a result, the companies aiming to explore the international markets should file the trademarks first and the parties involved should define trademark ownership when concluding the contracts." Huang Hui says.

(China IP News)

2013-11-13