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How to Determine Similarity of Goods/Trademarks --A Brief Analysis on the Policy Orientation Reflected from the Opinions of the Supreme People's Court on Several Issues Relating to Trials of Administrative Cases Concerning the Grant and Confirmation of Tr

Trademark Department
Linda Liu & Partners
 
Since the revision of Trademark Law in 2001, the decisions in relation to grant and confirmation of trademark right made by the Trademark Review and Adjudication Board of State Administration for Industry and Commerce of China (“TRAB”), including the review decision, review decision of opposition, decision of dispute and cancellation, were no longer the final administrative decisions and they were put into the scope of judicial review. In practice, the administrative cases concerning grant and confirmation of trademark right have become a very important part of the trial work of intellectual property of the people’s courts. Moreover, thanks to the social influence of some cases concerning well-known trademarks, the social attention to this kind of cases has been enhanced. In the trial of the administrative cases concerning grant and confirmation of trademark right, the similarity of goods and of trademarks is one of the basic and key points in the trial.

Over ten years of judicial practice, in the April of 2010, the Supreme People’s Court stipulated the Opinions of the Supreme People's Court on Several Issues Relating to Trials of Administrative Cases Concerning the Grant and Confirmation of Trademark Rights (Court [2010] No.12, hereafter referred to as “Opinions”) which provided some new guidelines to a certain number of judicial review standards in the administrative cases concerning grant and confirmation of trademark right, including the determination of similarities between trademarks and their corresponding goods. In order to help trademark applicants and owners to understand the standards of grant and confirmation of trademark right established by China Supreme Court and to obtain some enlightenment and relevant practical experience, this text is trying to analyze the related content concerning the determination of similar trademarks and goods prescribed in the Opinions. Some judicial cases which were tried in accordance with the Opinions were also provided.  

The Interpretations of the Supreme People's Court on Several Issues Relating to Trials of Cases Concerning Trademark Civil Dispute (Court Interpretation [2002] No.32, hereafter referred to as “Interpretations”), which came into force in 2002, provided a specific judicial interpretations to the similar goods/services and similar trademarks.

The Article 9(2) of the Interpretations stipulated that the similar trademarks prescribed in Article 52(1) of the Trademark Law refers to the allegedly infringing trademark which is similar to the registered trademark in aspects of the font, pronunciation, meaning of word, or composition and color of a device, or the overall structure of the composition of elements, or the three-dimensional form, color and composition, to such an extent as to confuse the relevant public about the source of goods or make them believe that there is particular relevance between goods of the allegedly infringing trademark and those of the registered trademark.

The Article 10 of the Interpretations stipulated the principles for determining the identical or similar trademarks:

1. The standard should be based on the common attention of the relevant public;

2. Comparison should be made on the overall appearances as well as the key parts of the trademarks and should be performed separately for each trademark;

3. To determine whether the trademarks are similar, the distinctiveness and awareness of the registered trademark requesting protection should be considered.

The Article 11 of the Interpretations stipulated that the similar goods prescribed in the Article 52(1) of the Trademark Law refer to goods that are identical in function, usage, production division, marketing channel, consumers, etc. or confusingly similar as to make the relevant public believe that they are of particular relevance. The similar services refer to services that are identical in purpose, content, manner, object, etc. or confusingly similar as to make the relevant public believe that they are related. The similarity between goods and services refer to the goods and services which are of particular relevance as to confuse the relevant public easily.

The Article 12 of the Interpretations stipulated that the people’s courts should consider the common knowledge of the relevant public to the goods/services in determining the similarity of goods/services in accordance with the Article 52(1). The International Classification of Goods and Services for Trademark Registration and the List of Designated Goods and Services can be used as reference in determining the similar goods/services.

The Article 14 of the Opinions pointed out that the people’s courts may refer to the above provisions prescribed in the Interpretations in determining the similarity of goods and trademarks in the cases concerning the grant and confirmation of trademark rights. This indicates that the above Interpretations are still the basic standard for determination of the similarity of goods and trademarks. 

However, in some situations, the meaning of the above mentioned Interpretations needs to be further explored due to the complexity of cases concerning the grant and confirmation of trademark rights. Though the Interpretations take the distinctiveness and awareness of a trademark requesting protection into consideration, the trademark per se is essential in the determination of the similarity of trademarks. The Interpretations neither points out that the courts should take the relevance of goods bearing the trademark into consideration nor emphasizes the purposes of striking unfair rush-register acts, protecting the prior marks which are of comparatively high recognition and distinctiveness, and decreasing confusion of commercial signs as much as possible. With regards to the determination of the similarity of goods/services, though the International Classification of Goods and Services for Trademark Registration and the Lists of Goods and Services are listed as reference rather than the only standard, since the Interpretations emphasizes the similarities of goods/services in aspects of function, usage, production division, marketing channel, consumers, etc., the standard of determination of the similarity of goods is comparatively strict. Therefore, in trademark practice, when a trademark case goes through a procedure like trademark review, opposition, or litigation on disputes, how to treat the objective facts such as the distinctiveness, awareness, state of use of a trademark and the relevance of goods and how to effectively restrain the unfair rush-register acts and eliminate the possibility of confusion among the commercial signs have become a new subject.

In fact, in the March and April of 2009, China Supreme Court released two documents, the Opinions of Supreme Court on Several Issues Concerning the Implement of State Intellectual Property Strategy (Court [2009] No.16) and the Opinions of Supreme Court on Several Issues Concerning the General Situation of Intellectual Property Service in Current Economic Situation (Court [2009] No.23), which provided guiding opinions to issues of “similar goods” and “similar trademarks” from the perspective of “reasonably defining the scope of trademark right”, that is “to determine the strength and scope of the trademark according to the distinctiveness and awareness of the trademark and to accurately recognize the similarities of goods and of trademarks and the result of causing confusion in trademark infringement cases”, “to determine the similarities of goods and of trademarks, one should consider the distinctiveness and market awareness of the registered trademarks requesting protection. The more distinctive and recognized is the registered mark, the wider and stronger is the protection”. Though the above two Opinions are directed for trademark infringement cases, they serve as guidance to the determination of “similar goods” and “similar trademarks”. The Opinions released by the Supreme Court this time gave a more specific and comprehensive explanation on this. 

In April of 2010, by a number of investigations and expert opinion hearings, the Supreme Court released the Opinions after summarizing the trial experiences in cases concerning the grant and confirmation of trademark rights through specific administrative acts, including trademark refusal review, trademark opposition review , trademark dispute, and trademark cancellation review. Article 1, Article 15 and Article 16 of the Opinions increase and enlarge the applicability of the standard for determining the similarity of goods/services and of trademarks.

The Article 1 of the Opinions: For disputed trademarks that have not been in substantial use, the people’s courts may be appropriately strict to apply the standards for the grant and confirmation of trademark rights including determining the similarities of trademarks/goods and for solving conflicts with prior commercial signs, and fully consider the interests of the consumers and operators in the same business and effectively restrain the unfair rush-register acts. The people’s court should emphasize the protection for prior commercial signs of others including trademarks and trade names that have comparatively high awareness and distinctiveness, so as to eliminate the possibility of confusion among commercial signs as far as possible. For disputed trademarks that have been in use for a long time and have established comparatively high awareness in the market and have owned the relevant public, the people’s courts should accurately apply the legislative spirit of balancing the protection for the prior commercial signs with the market order, fully respect the fact that the relevant public have objectively distinguished the relevant commercial signs, and safeguard the established stable market order.

The Article 15 of the Opinions: In determining the similarities of goods/services, the people’s courts should consider the following factors:
 
whether the goods are the same or of comparatively high relevance in function, usage, production division, marketing channel, and consumer group;
 
whether services are the same or of comparatively high relevance in purposes, content, manner, and objects;
 
whether the goods and services are of comparatively high relevance and whether they are likely to made the relevant public believe that the goods or services are from the same source or relevant providers.
 
The International Classification of Goods and Services for Trademark Registration and the List of Goods and Services can serve as reference in determining the similarity of goods or services.

The Article 16 of the Opinions: The people’s courts should consider the similarity of the composing elements and the overall appearance between the trademarks as well as the distinctiveness and awareness of the trademarks and the relevance of the designated goods. Whether it is easy to cause confusion can be taken as a determination standard.

Comparing the relevant provisions of the Interpretations and Opinions, with regards to the similar goods/services, the Opinions introduced the concept “of comparatively high relevance” while maintaining the standard of whether the goods are the same in function, usage, production division, marketing channel, and consumer group. With regards to the determination of the trademarks, the Opinions consider the “three principles” of the Interpretations as well as the relevance of goods bearing the marks and pay more attention to the protection of others’ prior commercial signs such as trademarks and trade names that are of comparatively high awareness and distinctiveness. This increases the applicability of the standard in determining the similarity of trademarks and of goods/services in cases concerning the grant and confirmation of trademark rights.

The authorities, including the presiding judge Kong Xiangjun of the intellectual property tribunal of the Supreme Court, consider that the above mentioned Article 1 “for the first time clarifies the judicial policy orientation of the application of laws in the cases concerning the grant and confirmation of trademark rights, that is, the people’s courts should take the actual use of the disputed mark into consideration and make a difference between the trademarks have been widely used and those have not been in use. For the trademarks that are not in use or not in substantial use, the people’s courts may be appropriately strict in the application of the standards for the grant and confirmation of trademark rights and fully consider the interests of the consumers and operators in the same business. For those that may or may not be registered, the people’s courts can disapprove the registration. And the court should emphasize the protection of others’ commercial signs such as trademarks and trade names that are prior used and of certain influence and make the scope of commercial signs clear so as to prevent unfair acts such as free-ride acts and imitation, to create a more effective legal space for the development of brand economy. For trademarks that have been registered and used for a long time and have established comparatively high awareness in the market and formed the relevant public, the people’s courts should respect the fact that the relevant public have objectively distinguished the relevant trademarks, and safeguard the established stable market order. ”

From the above provisions, in accordance with the spirit of the Opinions, the people’s courts should consider the distinctiveness and awareness of both the cited mark (prior mark) and the disputed mark as well as whether the disputed mark has been put into use and the scope and extent of the use, in cases concerning the grant and confirmation of trademark rights. In practice, some disputed marks have not been in use while some have been widely used in commerce. The different extents of awareness and influence of these marks naturally result in different recognition by the relevant public. When a mark is not put into use yet, consumers have no way to recognize it. So such mark does not embody the essential function of trademark which is to distinguish the sources of goods/services. In practice, there is no lack of trademark registrations that free-ride prior famous trademarks in bad faith. For those trademarks, a reasonably strict standard should be applied in their grant and confirmation of trademark rights. This not only eliminates the possibility of confusion of commercial signs as far as possible, but also achieves fairness to the prior marks. 

Analysis on Administrative Litigation Cases Concerning the Similarity of Trademarks

In judicial practice, how do the courts at different levels apply the above mentioned Opinions? Do the awareness and state of use of trademark really affect the determination of the similarity of trademarks? You will see some reflection of the Opinions in the following cases.

Case No.:

1. Background

(1) Case Title:

Administrative litigation case concerning the TRAB (2008) No.31840 Trademark Opposition Review Decision on Trademark No.2012830 “HONYO”

(2) Issue:

Whether the No.2012830 trademark “HONYO” is similar to the cited No. 156865 trademark “HONDA” on identical or similar goods.

(3) Basic information of the case:

Case No. of the Beijing No. 1 Intermediate People’s Court:

IP Administrative Trial Court Decision No. 1551 (2010)

Plaintiff: HONDA GIKEN KOGYO KABUSHIKI KAISHA

Defendant: Trademark Review and Adjudication Board of State Administration for Industry and Commerce of China (TRAB)

Third party: Zengcheng Dongyang Motorcycle Industry Co., Ltd

Date of judgment: July 31, 2010

Relevant provision of law: Article 28 of the Trademark Law

(4) The summary of the case

The opposed mark “” was filed for registration by the third party Zengcheng Dongyang Motorcycle Industry Co., Ltd on October 16, 2001. The designated goods are “motorcycles; engines of motorcycles; tires for motorcycle wheels” in subclasses 1203 and 1208 under Class 12.

The cited mark “” was filed for registration by the plaintiff HONDA GIKEN KOGYO KABUSHIKI KAISHA on April 19, 1979 and was later approved for registration and renewed, with a term up to April 29, 2012. The cited mark was approved for registration in Class 12 with subclasses 1201~1207 and 1209~1210, including designated goods “vehicles; automobiles; motorcycles; shock absorbers for vehicles; buffers for vehicles”.

The plaintiff HONDA GIKEN KOGYO KABUSHIKI KAISHA filed an opposition application with the Trademark Office within a legal period. On August 8, 2007, the Trademark Office made the Trademark Opposition Decision No.03273 (2007): the opposed mark shall be approved for registration.

The plaintiff HONDA GIKEN KOGYO KABUSHIKI KAISHA was not satisfied with the decision and filed a review application with the Trademark Review and Adjudication Board. Meanwhile, the plaintiff also submitted the following evidences: relevant materials in print from the plaintiff’s website; photocopies of advertisements of the plaintiff’s products and trademark and declaration in newspapers such as China Industry and Commerce News, China Consumer News, Economic Information Daily, China Quality News, China Intellectual Property News, China Electromechanics Daily, China Auto News, Auto Week, Guangdong Industry and Commerce News, Southern Metropolitan Daily and China Court News; a photocopy of the State Protection List for Key Trademarks in the year of 2000 which contained the trademark “本田 Honda” used in automobiles and parts thereof; Response No.139 (2006) for Well-known Trademark made on October 12, 2006, in which “HONDA” was recognized as a well-known trademark with designated use in automobiles, motorcycles, etc.; reports of “HONDA” published in magazines such as Auto Time Week.

On November 23, 2009, the Trademark Review and Adjudication Board made the No.31840 Decision and held that the plaintiff’s argument was untenable and the opposed mark was approved for registration.

The plaintiff HONDA GIKEN KOGYO KABUSHIKI KAISHA was not satisfied with the opposition review decision and brought an administrative lawsuit with the Beijing No. 1 Intermediate People’s Court on the following grounds:

① In an effective judgment, the court confirmed that another trademark “HONTO” preemptively filed for registration by the third party is similar to “HONDA” of the plaintiff. In accordance with the same determination standard, the opposed mark “HONYO” in this case should also be confirmed as similar to “HONDA”.

② When a cited mark is of comparatively high awareness and strong distinctiveness, the court should reasonably relax the standard of the determination of the similarity when comparing the cited mark with the opposed mark.

③ The third party is obviously suggesting false connection with the reputation and well-known brand of the plaintiff in bad faith with the purpose of obtaining benefit unfairly and has performed a series of malicious acts.

On July 30, 2010, the Beijing No. 1 Intermediate People’s Court made the IP Administrative Trial Court Decision No. 1551 (2010), revoking the TRAB (2008) No.31840 Trademark Opposition Review Decision on No.2012830 Trademark “HONYO” and ordering the defendant to make a new decision.

2. The administrative and judicial opinions on the above issue

(1) The determination of the TRAB

In this case, the TRAB held that the opposed mark is composed of word “HONYO” while the cited mark is composed of word “HONDA”. The last two letters of the two marks “YO” and “DA” are completely different which make the two marks obviously different in overall appearance and pronunciation. Since the cited mark is of comparatively high awareness, it will not cause confusion and misrecognition among the relevant public since they are so familiar with the composing letters of the cited mark that they differentiate them easily when buying the goods bearing the two marks respectively. Therefore, the opposed mark does not constitute similar mark with the cited mark in the goods such as motorcycles prescribed in Article 28 of the Trademark Law. The arguments provided by HONDA GIKEN KOGYO KABUSHIKI KAISHA are untenable. In accordance with Article 33 and Article 34 of the Trademark Law, the TRAB made the decision: the opposed mark shall be approved for registration.

(2) The determination of the court of first instance

Whether the trademarks are similar, the factors such as the extent of similarity of the composing elements and overall appearance of the trademarks, the distinctiveness and awareness of the relevant trademarks and the relevance of goods bearing the trademarks should be considered and whether it is easy to cause confusion should be taken as the determination standard. The more distinctive and famous is the cited mark, the more possible that confusion may be caused among the relevant public. The TRAB is obviously wrong in determining that no confusion will be caused since the cited mark is of high awareness and should be corrected. In the light of this case, comparing the opposed mark “HONYO” with the cited mark “HONDA”, both are meaningless compositions of letters of which the first three letters are the same and there is of similarity in overall appearance. From the pronunciation, both are not pinyin in Chinese and there is similarity in pronunciation according to the English phonetic rules. Meanwhile, considering that the cited mark is a created word and of high distinctiveness, it can be recognized as of comparatively high awareness before the application date of the opposed mark in accordance with a number of evidences provided by HONDA GIKEN KOGYO KABUSHIKI KAISHA in the trademark review procedure and the relevant consumers are likely to misrecognize the opposed mark and the cited mark are serial marks when observing the two marks separately. The decision made by the TRAB that the opposed mark does not violate Article 28 of the Trademark Law based on the reason that it is not similar to the cited mark is unclear in ascertaining fact and wrong in the application of law. The decision is revoked by this Court. 

3. Short analysis

In this case, the last two letters of the opposed mark “HONYO” and the cited mark “HONDA” are completely different, which causes certain difference between the two in overall appearances and pronunciation. Without considering the awareness of the cited mark, it is not likely to cause confusion among the relevant public when the two marks are used in their corresponding designated goods.

However, the cited mark “HONDA” is of comparatively high awareness in China which is well proved by a number of evidences provided by the plaintiff. The court of first instance revoked the review decision made by the TRAB with full consideration of the awareness of the cited mark and the continuing bad faith of the opposed party. The court determined that the use of the opposed mark will cause misrecognition and confusion among the consumers in accordance with Article 28 of the Trademark Law which is a reflection of being reasonably strict in applying the standard of the determination of trademarks.   

Case No.

1. Background

(1) Case Title:

Administrative litigation case concerning the TRAB (2009) No.15973 Trademark Opposition Review Decision on Trademark No.1676649 “UBINOBOSS 班尼波士”

(2) Issue:

Whether the No. 1676649 trademark “UBINOBOSS 班尼波士” is similar to the cited mark I No.257001, cited mark III No.G550975 and cited mark IV No.G606620 on identical or similar goods.

(3) Basic information of the case:

Case No. of the Beijing No. 1 Intermediate People’s Court:

IP Administrative Trial Court Decision No.2586 (2009)

Plaintiff: HONG KONG UBINO INTERNATIONAL LIMITED

Defendant: Trademark Review and Adjudication Board of China Administration for Industry and Commerce of China (TRAB)

Third party: HUGO BOSS AG

Date of judgment: August 31, 2010

Relevant provision of law: Article 28 of the Trademark Law

(4) The summary of the case

The registrant of the opposed mark “UBINOBOSS+班尼波士” is UBINO company. The application date is July 17, 2000 and the application Number is 1676649, with designated goods “clothing; straps (clothing); neckties; headgear; hosiery; furs (clothing); down coats; underwear” in Class 25.

The registrant of all the three cited marks including cited mark No.257001 is HUGO BOSS TRADE MARK MANAGEMENT GMBH & CO.KG which is the predecessor of HUGO BOSS AG. The application dates of the three cited marks are all earlier than that of the opposed mark, and the designated goods of the cited marks are also in Class 25 and constitute similar goods with those of the opposed mark.

The comparison of the opposed mark and the three cited marks are as follows:



On February 22, 2005, the Trademark Office (“TMO”) made the decision concerning the opposition filed by HUGO BOSS AG against the opposed mark. The TMO held that HUGO BOSS AG did not provide sufficient evidence to prove that the cited marks are of high awareness and that the opposed mark is an imitation of the cited marks, and thus the ground for cancellation is not sound and the opposed mark should be approved for registration.

HUGO BOSS AG is not satisfied with the decision and filed a review with the TRAB on March 15, 2005. In the opposition review, HUGO claimed that the trademark “BOSS” was included in the State Protection List of Key Trademarks completed by the TMO in June, of 2000, which can support the fact that the trademark “BOSS” was of comparatively high awareness before the application date of opposed mark. HUGO BOSS AG also quoted that the trademark “BOSS” was recognized as of certain awareness and influence in the Trademark Opposition Decision Nos.3898, 2617, 2688 (1999),  and the Trademark Opposition Decision No.2467 (2000) made by the TMO from May 1999 to January 2010. For this purpose, HUGO BOSS AG provided 29 copies of judgement documents concerning the protection history and facts made by the Trademark Office and the court. The TRAB decided in favor of HUGO BOSS AG in the review.

The plaintiff HONG KONG UBINO INTERNATIONAL LIMITED was not satisfied and brought an administrative lawsuit with the Beijing No. 1 Intermediate People’s Court. The plaintiff asserted that the opposed mark is neither identical with nor similar to the cited marks, and they are obviously different in pronunciation, appearance and meaning. They do not constitute similar marks. Meanwhile, the opposed mark has been continuously used for a long time by the company and has obtained a stable market as well as the recognition of consumers. In fact, the opposed mark did not cause confusion with the cited marks.

On August 31, 2009, the Beijing No. 1 Intermediate People’s Court made an administrative judgment: IP Administrative Trial Court Decision No.2586 (2009). The judgment upheld the TRAB’s decision of (2009) No.15973 Trademark Opposition Review Decision on No.1676649 Trademark “UBINOBOSS 班尼波士”.

2. The administrative and judicial opinions on the above issue

(1) The determination of the TRAB

In this case, comparing the opposed mark with the three cited marks, the opposed mark contains the word part of the cited marks “BOSS” wholly and there is no obvious difference in meaning. Designated goods of the opposed mark are similar to those of the three cited marks. Meanwhile, the evidence such as the State Protection List of Key Trademarks provided by HUGO BOSS AG proved that its trademark “BOSS” is of comparatively high awareness on goods such as clothing, and that the registration and use of the opposed mark is likely to cause misrecognition and confusion among the consumers. The opposed mark constitute similar marks on similar goods to the cited marks I, III and IV. Moreover, the evidence provided by UBINO Company is not sufficient to prove that the opposed mark is well-known. In accordance with the Article 28, Article 33 and Article 43 of the Trademark Law, the TRAB made the decision: the trademark “UBINOBOSS班尼波士” No.1676649 should not be approved for registration.

(2) The determination of the court of first instance

From the situation of the trademarks, the court should consider both the records of the two trademarks and the awareness thereof in the determination of whether the opposed mark is similar to the cited marks.

The cited mark I “BOSS” and the opposed mark “BINOBOSS班尼波士” are different from the appearance, but the opposed mark contains “BOSS” wholly. “BOSS” means “a person who employs or superintends workers” while “BINO” and “班尼波士” are meaningless. As to addressing, “班尼波士” dominates, which is different from that of “BOSS”. However, from the view of the awareness of the trademark “BOSS” of HUGO BOSS AG, in June of 2000, the Trademark Office has already put it into the State Protection List of Key Trademarks, and the decisions made by the Trademark Office support the fact that HUGO BOSS AG did not ever stop promoting and protecting its trademark “BOSS”. According to this, the TRAB considered that the cited marks are of high awareness and concluded properly that the opposed mark is similar to the cited marks.

Comparing the opposed mark with the cited marks III and IV: the cited marks III and IV are “BOSS+ HUGOBOSS” of which the noticeable part is “BOSS”, but “HUGOBOSS” is also recognizable; the opposed mark contains “班尼波士” which is not contained in the cited marks; but both the opposed mark and the cited marks contain “BOSS” which is of meaning while the other parts of the marks are of no meaning. Considering the awareness of the trademark “BOSS”, the “BOSS” contained in the opposed mark probably draws more attention from the consumers than “班尼波士” and thereby causes connection with the cited trademarks of HUGO BOSS AG. If both of the two trademarks are used in the goods of Class 25, it is likely to cause confusion and misrecognition in the source of the goods among the consumers.

To sum up, the opposed mark constitute the trademark which should not be registered under Article 28 of the Trademark Law. The TRAB (2009) No.15973 Trademark Opposition Review Decision is clear in ascertaining fact and correct in applying law.

3. Short analysis

The court considered the awareness of marks in determination of whether two trademarks are similar, besides referring to the trademark record. In this case, the opposed mark has major difference in appearance compared with the cited marks, particularly with the cited mark I. As the court stated in the judgment, the two trademarks are different in overall appearance and addressing. However, as the cited marks are of high awareness, the court finally decided that the opposed mark is similar to the cited marks.

On the other hand, since the plaintiff did not provide evidence to prove that the opposed mark has been in substantial use before filing the application, the evidence for proving the awareness of the opposed mark lacks necessary relevance to the facts to be proved. Therefore, the opposed mark can be deemed as a trademark that has not been in substantial use. In this situation, the court is strict in the standard of the determination of similarity in order to eliminate the possibility of confusion among the commercial signs, and judged that the opposed mark is similar to the cited marks and upheld the decision made by the TRAB.
 
II. Analysis on Administrative Litigation Cases Concerning Similarity of Goods

Case No. I:

1. Background

(1)Case Title
 
Administrative litigation case concerning the TRAB [2010] No. 00132 Trademark Opposition Review Decision on Trademark No. 3008921 “HinQ & device”

(2) Issue:

Whether the opposed trademark and the cited trademarks constitute similar trademarks on identical or similar goods?

(3) Basic information of the case:

Case No. of the Beijing No. 1 Intermediate People’s Court:

IP Administrative Trial Court Decision No. 2373 (2010)

Plaintiff: HINO JIDOSHA KABUSHIKIKAISHA (Hereafter referred as “Hino Company”)

Defendant: Trademark Review and Adjudication Board of State Administration for Industry and Commerce of China (TRAB)

Third party: Beijing Ri Chan Jia He Lubricating Oil Co., Ltd. (Hereafter referred as “Ri Chan Jia He”)

Date of the judgment: September 17, 2010

Relevant article of law: Article 28 of the Trademark Law

(4) The summary of the case

The opposed trademark No. 3008921 (the opposed mark) was filed for registration with the Trademark Office by the third party on November 1, 2001. The trademark application was approved for registration on the designated goods “Lubricating oil; Lubricating grease; Cutting fluid; Lubricant; Industrial oil” in Class 4.

The cited trademark No. 1165024 (cited mark I) was filed by the plaintiff on March 6, 1997 with the Trademark Office. The trademark application was approved for registration on April 7, 2008. The valid period of the registration is from April 7, 2008 to April 6, 2018. The designated goods are “Trucks; Buses; Parts and assembles of trucks; Parts and assembles of buses; Engines for land vehicles” in Class 12.

The cited trademark No. 146590 (cited mark II) was filed by the plaintiff on March 27, 1979 and approved for registration on May 15, 1981. The valid period is from May 15, 2001 to May 14, 2011. The designated goods are “Vehicles; Passenger cars; Trucks; Engine for passenger cars; Parts and assemblies for vehicle cars” in Class 12.

The cited trademark No. 1167285 (cited mark III) was filed by the plaintiff on March 6, 1997 and approved for registration on April 14, 1998. The valid period is from April 14, 2008 to April 13, 2018. The designated goods is “Engines, other than for land vehicles” in Class 7.

The cited trademark No. 335463 (cited mark IV) was filed with the Trademark Office by the plaintiff on March 22, 1988 and the cited trademark was approved for registration on January 10, 1989 with the renewed current valid period starting from January 10, 2009 to January 9, 2019. The designated goods is “motors including motors for boats” in Class 7.

The above-mentioned trademarks are as follows:



The plaintiff was not satisfied with the TMO [2007] Opposition Decision No. 06585 and filed a review before TRAB on December 18, 2007. The main facts and reasons are: 1. Hino Company is the real owner of the trademark “HINO” which is the company’s trade name and a famous trademark that has been used for many years in China. 2. The designated goods of the opposed trademark constitutes similar designated goods to the goods of the cited marks; the opposed mark and the cited marks are thus similar trademarks on the similar designated goods. 3. Ri Chan Jia He as a company specializing in producing lubricants for the use in heavy duty vehicles must have known the high reputation of the trademark “HINO” in the heavy duty vehicles field but filed the very similar trademark for registration; it was obviously trying to make use of the reputation of the Hino Company and seek illegal profits.

The defendant made the review decision No. 00132 on January 11, 2010. The plaintiff was not satisfied with the review decision and filed an administrative litigation with the Court.

In the court hearing, the plaintiff clarified that it will only insist the argument that the four cited marks are of some awareness and the opposed mark are similar to the four cited marks on the similar designated goods but give up other litigation arguments.

2. The administrative and judicial opinions on the above issue

(1) The Determination of the TRAB

The focus of this case can be concluded into the following three aspects: ① whether the opposed trademark and the 4 prior registered trademarks of Hino Company are similar trademarks on identical or similar goods; ② whether the cited marks I and II are famous trademarks and the opposed mark violates the Article 13 of the Trademark Law; ③ Whether the registration of the opposed mark is in violation of the prior trade name right of the Hino Company and violates the Article 31 of the Trademark Law.

On the aspect 1, the designated goods of the opposed trademark “Lubricating oil; Lubricating grease” are different from the designated goods of the four cited marks in function, use, sales channel and objects of consumption, they should not be regarded as identical or similar goods. Even if the opposed trademark co-exists with the above-mentioned cited marks in similar design and composing letters, since the goods of the opposed mark are not similar to those of the cited marks, they will not cause any confusion to the consumers on the source of the designated goods and should not constitute similar trademarks on the similar designated goods.

On the aspect 2, in consideration of the factors which should be taken for reference in the recognition of well-known trademarks prescribed in the Article 14 of the Trademark Law and the evidence of this case, it is difficult to recognize that the cited mark 1 and cited mark 2 of Hino Company were well-known prior to the application of the cited mark. The registration of opposed mark will not lead to the result that it will confuse the public and damage the legal interests of the Hino Company. Therefore, the claim by Hino Company that the opposed mark imitates the cited marks in bad faith is untenable.

On the aspect 3, the evidence submitted by Hino Company can not prove that the opposed trademark was used and of some awareness in the lubricating oil and industrial oil field prior to the application of the opposed mark. To sum up, the submitted evidence can not support the claim that the opposed mark will cause confusion among the consumers in respect of source of the goods and further will damage the interest of Hino Company. The Hino Company’s claim that the opposed mark violates its prior trade name right is not supported by the defendant.

To sum up, the review arguments of the Hino Company are untenable. According to Article 33 and Article 34 of the Trademark Law, the opposed mark is allowed for registration.

(2) The determination of the court of first instance

The similarity of the trademark refers that the similarity of the words in the trademarks in font, addressing, meaning or appearance of devices, or the similarity of the trademarks in the order and combination of words and devices so as to cause confusion and misrecognition in the source of goods among the relevant public. In this case, firstly, the opposed mark and the four cited marks are all composed of the same English letters and the word sequence are also identical only with a slight difference in font and formation. Therefore, the two marks are similar in composing elements and overall appearance and should be regarded as similar trademarks.

Secondly, on the issue that whether the designated goods of the opposed mark are similar to those of the four cited marks, the Court held that according to the Article 11 of the Interpretations of the Supreme People's Court of Some Issues concerning the Trial of Cases on Trademark Civil Dispute Cases, “Similar goods” refers to goods that are identical in function, usage, production division, marketing channel and consumers, etc., or confusingly similar as to make the relevant public believe that they are of particular relevance. The similarity between the goods and services refer to the goods and services which are of particular relevance as to confuse the relevant public easily. According to Article 12, when judging whether the goods or services are similar, the people’s courts should determine according to the common knowledge of the relevant public to the goods/services. The International Classification of Goods and Services for Trademark Registration and the List of Designated Goods and Services can be used as reference. In this case, the opposed mark is designated in the use of the goods “lubricating oil”, etc. in Class 4; the cited marks I and II are designated in the use of the goods “trucks”, “buses”, etc. in Class 12 respectively; the cited marks III and IV are designated in the use of the goods “engines, other than for land vehicles” and “general motors” in Class 7. To the average knowledge of relevant consumers, the goods such as lubricating oil, etc. are closely related to the goods such as “trucks”, “engines”, etc. in respects of function and usage. Lubricating oil places a very important role in the maintenance and repair of vehicles and engines. The viscosity, grade and purity of the lubricating oil affect the smooth functioning of the parts like engines, gearing parts of vehicles greatly. The use of lubricating oil can reliably lubricate the engine, reduce the wear and tear and the breakdown of the engine as well as prolong the operating life, while the vehicles and engines cannot operate normally without lubricating oil; Furthermore, the goods overlap in marketing channels and consumption targets. Therefore, the goods “lubricating oil”, etc. are similar to the goods “trucks”, “engines”, etc.

To sum up, the opposed mark are similar to the 4 cited marks on identical or similar designated goods and their co-existence will cause confusion on the sources of the designate goods among the relevant public. They constituted similar trademarks. The litigation claims of the plaintiff are tenable in facts and legal bases. Therefore, the Decision No. 00132 is wrong in ascertaining fact and the court revokes the decision according to law.

3. Short analysis

In this case, the opposed trademark and the four cited marks are all composed of four identical letters. The trademarks are also identical in order with only some slight differences in font and formation. The goods of the opposed mark belong to Class 4, while the goods of the cited mark belong to Class 12. According to the Lists of Goods and Services, they are not similar goods. Although the court did not clearly recognize the popularity of the prior trademarks of Hino Company, it ruled that the goods “lubricating oil” is similar to the goods “trucks” and “engines” since the goods of the two parties overlap in marketing channels and consumption targets.” The ruling of the court obviously took the facts that “the goods are closely related in marketing channels and consumer group” into consideration. The court also considered the high awareness as well as the distinctiveness of the prior marks and that the opposed mark is a mark that has not widely put into use comparing with the cited marks. In the situation that the marks are very similar, the criterion on judging the similar designated goods should be strict so as to reduce possible confusion of the consumers to the great extent, which reflect the spirit of the Opinions. 
 
Case No. II:
 
I. Background

(1). Case Title

Administrative litigation case concerning TRAB Decision [2009] No. 36484 on “Trademark Dispute Case Concerning the Trademark ‘M3’ No. 3377767”

(2) Issue:

Whether the opposed trademark and the cited trademarks constitute similar trademarks on identical or similar designated goods?

(3) Basic information about the case:

Case No. of the Beijing No. 1 Intermediate People’s Court:

IP Administrative Trial Court Decision No. 933 (2010)

Plaintiff: SHEN ZHEN ZI LI SUPPLY CHAIN MANAGEMENT CO., LTD. (Hereafter referred as SHENZHEN ZI LI )

Defendant: Trademark Review and Adjudication Board of State Administration for Industry and Commerce of China (TRAB)

Third party: 3M COMPANY

Date of the judgment: August 20, 2010

Relevant article of law: Article 28 of the Trademark Law

(4) The Summary of the case

The disputed trademark “M3” was filed by SHENZHEN ZI LI INFORMATION TECHNOLOGY CO., LTD. on November 21, 2002 and approved for registration on February 7, 2004 with the validity up to February 6, 2014. The designated goods include “Compact discs [read-only memory]”, “Compact discs”, “Computer software (recorded)”, “Micro-groove compact discs [random access memory]”etc. The subclasses of the goods are 0901, 0906, 0908, respectively. The company changed its name into SHEN ZHEN ZI LI SUPPLY CHAIN MANAGEMENT CO., LTD. since April 15, 2009.

All the three cited marks are owned by the third party 3M Company. Among them, the cited mark I “3M” (Reg. No. 138324) was approved for registration on July 5, 1980 and it was renewed with the validity up to July 4, 1010. The designated goods are “Video tape”, “Video disc” and “Micro-groove Compact disc”, etc. The subclasses of the goods are 0901, 0908~0909.

The cited mark II “3M” (Reg. No.283503) was filed for registration on June 7, 1986 and it was renewed with the validity up to April 19, 2017. The designated goods of the registration are “Data processing equipments”, etc. The subclasses of the goods are 0901, 0907~0911.

The cited mark III “3M” (Reg. No.727253) was filed for registration on July 7, 1993 and it was renewed with the validity up to January 27, 2015. The designated goods are “Infrared ray safety light (for instrument)”, etc. The subclasses of the goods are 0901, 0903~0904, 0907~0908, 0910, 0913, 0916, 0919, 0921, and 0924. The three trademarks were all filed by MINNESOTA MINING AND MANUFACTURING COMPANY and assigned to 3M Company.



3M Company filed a dispute to cancel the disputed trademark with TRAB on January 23, 2006 on the ground that the disputed trademarks constitute similar trademarks with the three cited marks on similar designated goods and the disputed trademark is an imitation and reproduction of the trademarks of 3M Company in bad faith; the disputed trademark is a preemptive registration out of unfair means; the cited marks of 3M Company should be recognized as well-known trademarks; according to the Article 13, Article 31 and Article 41 of the Trademark Law as well as Article 29 of the Implementing Rules, 3M Company requested to cancel the disputed trademark. Meanwhile,  3M Company submitted copies of the State Protection List for Key Trademarks in the year of  1999 and 2000 which contained the mark “3M” used in electronic product, magnetic disc, as well as the decisions on opposition review case and dispute case made by the TRAB in 1996 and 2001 in which the trademark “3M” was recognized as a well-known trademark among relevant public. 

The TRAB made the decision No. 36484 on January 4, 2010. ZI LI Company was not satisfied with the Decision No. 36484 and filed an administrative litigation with the court.

During the court hearing, Zi Li Company admitted the following facts: except the goods “Neon Light Billboard”, “Bulletin Board System”, the goods of the disputed mark are similar to those of the three cited marks; Zi Li Company received the materials submitted by 3M Company but did not make comment on the authenticity of the materials; the trademark “3M” is of some awareness on the electronic products.
 
2. The administrative and judicial opinions on the above issue

(1) The Determination of the TRAB

The “tapes”, “disc”, “bulletin board system”, etc. of the disputed mark are identical or similar to “video tapes” of the cited mark I, “data processing equipment” of the cited mark II and “infrared ray safety indicator (instruments-)” of cited mark III. The disputed mark is only different from the cited marks in order. Furthermore, the trademark “3M” of 3M Company is of some awareness on the goods “electronic products, discs”, etc. and the use of the disputed mark on the goods similar to or identical with those of the cited marks will cause confusion or misrecognition. Therefore, the disputed mark is similar to the cited marks on similar or identical goods. As to the request of 3M Company on recognizing its trademark “3M” to be a well-known trademark, since the present case does not involve cross class protection, the recognition of famous trademark is not necessary. According to Article 28, Article 41 (3), Article 43 of the Trademark Law and Article 29 of the Implementing Rules of the Trademark Law, the defendant made the decision on the dispute case: the registration of the disputed mark should be cancelled.
 
(2) The determination of the court of first instance

Comparing the designated goods “neon light billboard”, “bulletin board system” of the disputed mark with the goods “infrared ray safety indicator (instrument-)” of the cited mark III, they are identical or similar in respects of main raw materials, manufacturing sectors, marketing channels, etc., so they should be determined as similar goods. The disputed mark “M3” is not noticeably different from the three cited marks with only slight difference in the order and font. Furthermore, ZI Li Company also agreed with the determination in the Decision No. 36484 that the trademark “M3” is of some awareness. Therefore, the co-existence of the disputed mark and the three cited marks will cause confusion and misrecognition among the relevant consumers. The TRAB is correct in determining that the disputed mark is similar to the three cited marks on similar or identical designated goods, and the court ruled to uphold the decision.

3. Short analysis

According to the List of Goods and Services, the designated goods of the disputed mark belong to the subclasses 0901, 0906 and 0908 of Class 9. Among the designated goods, “neon light bulletin” and “bulletin board system” fall into subclass 0906 which is different from the subclasses which the designated goods of the three cited marks fall into. According to the List of Goods and Services, the goods should not be regarded as identical or similar designated goods. However, through the submitted evidence and court hearing, it can be determined that the cited marks are of some awareness in China. Meanwhile, the registrant of the disputed mark failed to submit evidence to prove the use of the disputed mark. Therefore, it can be determined that the disputed mark has not been put into wide use. With full consideration of the interests of the relevant consumers and the operators of the same business, the court took a strict criterion and judged that the goods “neon light bulletin” and “bulletin board system” are similar to the designated goods of the cited marks.

Conclusion

From the above cases, it can be seen that the awareness, state of use of the prior cited marks, and the state of use of the disputed mark play a crucial role in determining whether the trademarks are similar by the TRAB and the Court of the First Instance.
 
In the business activities, the creation and use of a distinctive trademark with high awareness embodies the wisdom and efforts of the creator who devote great human resources, material resources and time in the creation of the trademark and in the nurture of popularity from weak to strong and from unknown to well-known. It is hardly a coincidence that others design and use a trademark identical with or confusingly similar to the prior trademark. Therefore, a well-known trademark usually receives wider protection and the determination standard of similarity is comparatively stricter. Such standard can effectively prevent the confusion or misrecognition caused.

For the disputed trademarks that have not been used, the trademark applicant or registrant has not enjoyed the trademark right in its true sense, that is, identification of the source of goods/services. A strict standard on the grant of confirmation of trademark right can on one hand fully protect the interests of the consumers and operators of the same business, and on the other hand avoid the extra costs devoted to helping consumers distinguish the disputed mark after it has been put into wide business use for a period of time. From the above cases, it can be seen that the court consistently applied the strict standard in determining similarity to the trademarks which are not in substantial use and trademarks that are highly distinctive and are of high awareness. However, it should be noted that the determination and examination should be performed according to the specific case and corresponding laws and regulations. For the cases that the legal requirements and the scope of the standard are clear, the standard for determining similarity of goods/trademarks should be strictly applied according to the law and the determination standard should not be changed randomly. Only when it would be obviously unfair to an enterprise using a prior commercial signs if a stricter standard is not applied, can the people’s court apply the law within the scope of its discretion to reflect the policy and value orientation.
 
(2010)
 
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