Who will win Supreme trademark battle in China?

By Chris TIAN, Chinese intellectual property lawyer based in Shanghai. (email: chris.tian@yingxinlaw.com, mobile: +86 158 0081 4467)

• Supreme started as a humble Lower Manhattan skate store located in New York USA, opened by British-American entrepreneur James Jebbia in 1994. It has since grown into one of the most sought-after brands in fashion. Now the brand supreme worth 1 billion USD. This Supreme owner is called CHAPTER 4 CORP (or Supreme New York).

• On 11 Nov 2015, an Italian, Mr. Michele DIPIERRO registered a UK company called INTERNATIONAL BRAND FIRM LTD (IRF, Supreme Italy), Mr. Michele DIPIERRO used the company filed trademark registrations of Supreme in 67 countries at least until 2019.

• CHAPTER 4 CORP filed an application on March 4, 2014 (could acquired it from a third company on Nov. 26, 2015). It went through trademark objection procedures, trademark objection appeal procedures, and took 7 years to get it approved on Jan. 21, 2020, however there is a third party filed trademark nullification application on March 13, 2020, this Supreme trademark is still on trademark nullification procedures. From my point of view, the chance for China state Intellectual Property Bureau to favor CHAPTER 4 CORP is good.

• CHAPTER 4 CORP acquired a SUPREME HORSE trademark, SUPREME HORSE was filed on Oct. 17, 1997, and it is the first effective registered trademark which has the word Supreme (two applications prior to SUPREME HORSE filed by two HK companies, but these two trademarks did not get renewed, now these two trademarks were invalid), this acquired trademark also in the process of trademark revocation procedures.

• IRF (Supreme Italy) now has filed 24 supreme trademark applications in China, most of the applications got rejected, several applications are under trademark objection procedures.

• It was reported that IRF (Supreme Italy) now has 7 stores in Span and 2 stores in Shanghai (below 2 stores are in Shanghai). In late 2018, Samsung made announcement during the launch of Samsung’s Galaxy A8s smartphone in Beijing to collaborate with Supreme Italy, however after Supreme New York quickly denounced the Supreme Italy as a “counterfeit organization”. Samsung eventually canceled its plan.

Needless to say, Mr. Michele DIPIERRO, the founder of Supreme Italy is a super successful imitator!

• Could you find the difference between the below products ?(supreme Spain is authorized or controlled by Supreme Italy):

Note: Part of the content is quoted from https://edition.cnn.com/style/article/supreme-italia-legal-fake/index.html