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Lead: when a design patent is cited as evidence prejudicing the inventiveness of a patent for creation-invention, the disclosure of the drawings of the design patent should be deter...
I. Case Summary 1. Basic facts The applicant China Railway Engineering Group Co., Ltd. (hereinafter referred to as China Railway) is a mega corporate group owned by central governme...
The review case series on trademark refusal for “中国中铁(China Railway)” represented by Linda Liu & Partners is awarded as “Excellent Trademark Cases of 2020”!

I. Case Summary
 
1. Basic facts

The applicant China Railway Engineering Group Co., Ltd. (hereinafter referred to as “China Railway”) is a mega corporate group owned by central government integrating survey and design, construction and installation, industrial manufacturing, real estate development and other businesses in China. China Railway is one of the world’s largest construction contractors and its core brand is “中国中铁CREC & device” (see the figure below). As the abbreviation for the applicant’s company name and a key part of the trademark, “中国中铁(China Railway)” has been used for more than a decade. It has been evolving into a national brand well-known to the construction industry and consumers in China, and has only bonded with the applicant as the source of production.



 

The applicant filed trademark applications for the above trademark in 12 classes including class 6, class 7, class12 and class 37 on May 14, 2018. However, all of the applications were rejected due to the prior trademark “中铁” or the prior trademarks of which the main parts are “中铁”, “CREC & device”, etc. on similar goods.
The above refusals not only hindered the applicant’s local brand protection, but also seriously affected the brand to seek legal protection abroad.
 
In June 2019, our firm, entrusted by the applicant, filed petitions for the review on refusal in 11 classes. For convenience of exposition, herein only selects the trademark No. 30874260 in class 6 as an example.
 
2. The focus on dispute resolution
 
The focus in this case lies on whether the registration and use of the trademark “China Railway CREC & device” will cause confusion among Chinese consumers and whether the applied mark and the cited mark constitute similar trademarks.
 
The cited marks can be roughly divided into the following three types:
 
 (1) Trademark No. 1983548 “中铁” registered in the name of China Railway Materials Group Corporation (hereinafter referred to as “CRM”).

(2) Trademark No. 4827203 “CREC & device” registered in the name of the applicant’s wholly owned subsidiary, i.e., China Railway Corporation Limited (hereinafter referred to as “China Railway Corporation”)

(3) The trademarks applied in the name of other companies that are similar to the English part of the applied mark
 
3. Decision

In May 2020, the Trademark Review and Adjudication Board fully sided with our claims in the review and preliminariily approved the trademark application for publication. Now the trademarks are registered in all 11 classes.
 
II. Analysis of the Legal Significance of the Case
 
This case is highly representative as it involves a number of hot issues such as trademark co-existence under a specific historical origin, the admission of “Consent of Co-existence” issued by the registrant of the prior trademark, and the influence of national policies on trademark right grant and affirmation.
 
Determining similarity of trademark, in the final analysis, is more like a judgment and prediction on the use of trademarks. The trademark is merely a symbol without actual use. Only in use can a trademark highlight its value of existence and then accumulate goodwill and become a brand. Therefore, the discussion on whether the trademarks are similar or not should also consider the actual use.
 
Significance of the case:
 
1. The applicant and other central government-owned enterprises registered and used the related marks “China Railway” due to special historical reasons. When making the similarity comparison between others’ ordinary trademarks and the trademarks containing “China” which are different from ordinary trademarks, apart from the comparison of the main parts, the particularity of latter should be taken into consideration. The trademarks containing “China” often represent the leading enterprises in a certain industry. Generally speaking, the higher the reputation is, the more distinguishable it can be from others’ trademarks.
 
2. The applicant’s wholly owned subsidiary “China Railway Group” is a listed company and needs  a certain number of registered trademarks under its name. Requesting its subsidiary to transfer similar trademarks to the applicant may likely bring negative effects to the normal operation of its subsidiary. In this case, by issuing a consent letter, the conflict of rights was resolved in a flexible way with a win-win result.
 
3. This case reflects that the  adjudication department of the China Intellectual Property Administration is stongly supporting  key national leading enterprises to “go out”. The case helped the applied trademarks to seek legal protection through the Madrid registration system in the Belt and Road countries. It conforms to China’s current policy of supporting domestic enterprises going abroad.
 
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