Determination of Similarity of Extensive Trademark in China

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(Author: XIA Zhize; Source:  WAN HUI DA Law Firm)

The underlying registered trademark of the trademark applicant has a relatively high market reputation and popularity; the applicant applies for registration of another trademark (disputed trademark) on identical or similar goods which is similar to the underlying registered trademark. Others dispute the registration but have failed to submit proof evidencing the use or popularity of the reference trademark. If the relevant public will connect the disputed trademark with the underlying registered trademark and the right holder, it can be determined that the disputed trademark and the reference trademark do not constitute similar trademarks and that the use thereof on identical or similar goods will not cause confusion among the relevant public as to the source of the goods.

The No.1424486 registered trademark (Figure 1) of OPPLE Lighting Co., Ltd. (hereinafter referred to as OPPLE) was determined to have become a well-known trademark on goods of light and flash tube in November 2001.
Figure 1

An application for registration of the No.1714252 trademark (Figure 2) of OPPLE was made on 27 December 2000 and the registration was approved on 14 February 2002 for use on the 9th category of goods, including light regulators (electricity), transformers, rectifiers, optoelectronic switches (electrical appliance), power source materials (electric wire, cable), electric appliance plugs, alarms, electric irons, flashlights (signal light) and televisions.

Figure 2

On 21 December 2004, OPPLE applied for registration of No.4426515 trademark (Figure 3) (disputed trademark), which was designated for use on the 9th category of goods, including light regulators (electricity), transformers, rectifiers, optoelectronic switches (electrical appliance), power source materials (electric wire, cable), electric appliance plugs, alarms, televisions and electric switches.

Figure 3

A person surnamed Zhang disputed the No.4426515 trademark, arguing that this trademark constituted a trademark on identical or similar goods similar to its prior No.4350090 trademark (Figure 4) which was applied for on 8 November, 2004 and that the registration shouldn’t be approved. On 11 July, 2010, the Trademark office of the State Administration for Industry and Commerce (hereinafter referred to as the Trademark Office) made the No.14172 Decision on the Opposition to Trademark “OPPLE and Device” (2010, TM OP ZI No.14172), deciding that Zhang’s grounds for opposition did not have merit and that the registration of the disputed trademark be approved.

Figure 4

Dissatisfied with the Decision, Zhang applied to the Trademark Review and Adjudication Board of the State Administration for Industry and Commerce (hereinafter referred to as the TRAB) for review. In addition to the argument that the disputed trademark and his No.4350090 trademark (reference trademark 1) constituted similar trademarks on identical or similar goods, his grounds for review also included the argument that the disputed trademark and the No.734845 registered trademark (Figure 5) (reference trademark 2) of others constituted similar trademarks on identical or similar goods. An application for registration of No.734845 registered trademark (Figure 5) was made by Shanghai Yaming Lighting Co., Ltd. on 9 August 1993 and approved to be registered on 14 March 1995 and to be used on the 9th category goods of ballast and triggers.

Figure 5

On 29 October 2012, the TRAB made the No.44238 Review Decision on Opposition to No.4426515 Trademark “OPPLE and Device” (2012, TM RV ZI No.44238) (hereinafter referred to as No.44238 Decision), which held that the disputed trademark and reference trademarks 1 and 2 didn’t constitute similar trademarks on identical or similar goods and approved the registration of the disputed trademark.

Dissatisfied with the No.44238 Decision and in the belief that the disputed trademark and reference trademarks 1 and 2 constituted similar trademarks on identical or similar goods, Zhang instituted a lawsuit with Beijing First Intermediate People’s Court. The Court notified OPPLE to attend the trial of the case as a third party.

Beijing First Intermediate People’s Court held that the disputed trademark and reference trademark 1 didn’t constitute similar trademarks on similar goods. However, the goods on which the disputed trademark was designated to be used were identical or similar to the goods on which reference trademark 2 was approved to be used. The distinctive part of reference trademark 2 is “OPPEL” which consists of five English letters. The disputed trademark “OPPLE and Device” also includes five English letters which form the main part of the disputed trademark and have no specific meaning. It can be seen by comparing the disputed trademark with reference trademark 2 that the main identifying part of the disputed trademark is the same as the elements of reference trademark 2; only the order of the last two letters is different. The two marks are similar in terms of overall visual effect and pronunciation; if they co-exist in the market, relevant consumers will be easily caused to believe that there is a certain connection between the disputed trademark and reference trademark 2 with respect to the source of goods, thus leading to confusion. The disputed trademark and reference trademark 2 constitute similar trademarks on similar goods. The court made No.1342 Administrative Judgment (2013, BJ FR IP AD FR ZI No.1342 (hereinafter referred to as No.1342 Judgment) on 11 September 2013, ordering that: 1. No.44238 Decision be revoked; 2. The TRAB make a new review decision on the opposition.

Both OPPLE and the TRAB were dissatisfied with the judgment and filed an appeal with Beijing Higher People’s Court.

Beijing Higher People’s Court held that OPPLE’s trademark “OPPLE and Device” had acquired a relatively high market reputation and popularity in relation to lights and fluorescent tubes since 2001. Lamps, ballast and switches are auxiliary products for use and they are closely related to each other; the No.1714252 trademark “OPPLE and Device”, which is similar to the disputed trademark and whose approved goods are also the same as the designated goods of the disputed trademark, has been approved to be registered. As the disputed trademark is very similar to the aforesaid trademark of OPPLE, the relevant public will connect the disputed trademark with OPPLE and its prior registered trademark. Zhang cited reference trademark 2 as a barrier to the prior registration of the disputed trademark, though he didn’t submit proof evidencing the use, popularity, etc. of reference trademark 2. As existing proof is sufficient to establish a connection between the disputed trademark and OPPLE, it can be determined that the disputed trademark and reference trademark 2 don’t constitute similar trademarks and that their use on identical or similar goods won’t cause confusion among the relevant public. On 20 December 2013, the court made No.2036 Administrative Judgment (2013, BJ HI AD FI ZI No.2036), ordering that: 1. No.1342 Judgment be revoked; 2. No.44238 Decision be maintained.

Brief comment

This case involves the determination of the similarity of extensive trademarks and reflects the substantive role of confusion in determining similarity.

According to Article 8 of the Trademark Law, as amended on 27 October 2001 for the second time (hereinafter referred to as 2001 Trademark Law), the main function of a trademark is to distinguish the goods of the trademark owner from those of others. So, the protection of trademark right, in essence, is also the keeping of a reasonable boundary and distance between the goods of the trademark owner and those of others so as to prevent the relevant public from mistaking the goods of others for those of the trademark owner. Although Article 28 of the 2001 Trademark Law doesn’t provide for what makes a similar trademark, nor does it specify confusion as one of the elements for determining a similar trademark, “confusing similarity” should be something inherent in a similar trademark. In the sense of the Trademark Law, the similarity of a trademark not only refers to the similarity of two trademarks in appearance, but also that it easily causes the relevant public to mistake one for the other. The similarity in appearance is a formal element for similarity of a trademark, while the confusion and mistaking one for another is the essential element for similarity of a trademark.

This spirit is embodied in the relevant legal provisions, judicial interpretations or documents. Paragraph 1 of Article 13 of the 2001 Trademark Law provides that “A trademark for which an application is made for registration on identical or similar goods shall not be registered and its use shall be prohibited if it is a reproduction, an imitation or a translation of another party’s well-known mark that is not registered in China and it is liable to create confusion”, which means that confusion is a necessary element for requiring protection of unregistered well-known trademarks on identical or similar goods. Article 5 of the Law against Unfair Competition provides that “Operators shall not adopt any of the following unfair means to carry on transactions in the market and cause damage to competitors: (2) using, without authorization, the names, packaging or decoration peculiar to well-known goods or using names, packaging or decoration similar to those of well-known goods so that their goods are confused with the well-known goods of others, causing buyers to mistake them for the well-known goods of others.” In essence, the names, packaging or decoration peculiar to well-known goods are unregistered trademarks and confusion is also a necessary element for requiring their protection. Then, what about registered trademarks? Paragraph 2 of Article 9 of the Interpretation of the Supreme People’s Court regarding Several Questions on the Application of Law in the Trial of Trademark Civil Dispute Cases provides that “The phrase ‘trademark that is similar’ under Item (1) of Article 52 of the Trademark Law means where the suspected infringing trademark is compared with the plaintiff’s registered trademark and the font, pronunciation or meaning of the words or the composition or colouring of the device are similar, or the overall structure of its combined main elements is similar, or where its three-dimensional shape and combination of colours are similar, thereby easily leading the relevant public to mistake the source of the products or to believe that their source has a certain connection to products using the plaintiff’s registered trademark.” This provision also stipulates that confusion is a necessary condition for determining a similar trademark. In the Replies of Beijing Higher People’s Court to Several Questions in the Trial of Trademark Civil Dispute Cases, the Beijing Higher People’s Court pointed out in its reply to the 11th question that “Being sufficient to cause confusion or mistake among the relevant public is a necessary condition for constituting trademark similarity. Where only the words or device of the trademark are similar but not sufficient to cause confusion or mistake among the relevant public, it doesn’t constitute trademark similarity; it should be determined whether it’s sufficient to cause confusion or mistake among the relevant public when determining trademark similarity.” Article 57 of the Trademark Law, as amended on 30 August 2013 for the third time, provides that “Any of the following acts shall be an infringement of the exclusive right to use a registered trademark: (2) use of a trademark similar to a registered trademark on the same goods or use of a trademark identical or similar to a registered trademark on similar goods, without authorization of the proprietor of the registered trademark, where such use is likely to cause confusion”. This provision explicitly specifies confusion as a constitutive requirement of trademark infringement.

It is from the perspective of substantial similarity that when determining the similarity of a trademark, we, in addition to considering the symbol itself of a trademark, also need to take other factors into consideration. Item (3) of Article 10 of the Interpretation of the Supreme People’s Court regarding Several Questions on the Application of Law in the Trial of Trademark Civil Dispute Cases provides that “When determining whether trademarks are similar, the distinctiveness and popularity of the registered trademark for which protection is being sought should be considered”. Article 9 of the Opinions of the Supreme People’s Court regarding Several Questions on Serving the Overall Interests of Trial of Intellectual Property Right Cases in the Current Economic Situation provides that the relationship between protecting trademark rights and maintaining market order should be properly handled. Article 16 of the Opinions of the Supreme People’s Court regarding Several Questions on Trademark Authorization and Ownership Affirmation in the Trial of Administrative Cases provides that in determining whether trademarks are similar, the people’s court should also consider factors like the connection among goods on which the trademark is used and take as the determination standard whether confusion is easily caused. The consideration of these other factors outside the symbol of trademark is because it will have an impact on substantial confusion.

As far as extensive trademarks are concerned, the necessary condition of substantial confusion has especially important significance for determining trademark similarity. For instance, in this case, OPPLE registered the No.1424486 and No.1714252 trademarks. In order to optimize its brand image, OPPLE also applied for registration of the No.4426515 trademark, namely the disputed trademark. We can see the gradual evolution of OPPLE’s brand image from these three trademarks. No matter how OPPLE’s brand image evolves, however, the distinctive feature of these three trademarks is consistent, as are OPPLE’S brand image and reputation. As OPPLE’s No.1424486 and No.1714252 trademarks have high popularity and the disputed trademark has distinctive features which are consistent with these two marks, the relevant public, when seeing the disputed trademark, will usually connect it with the foregoing two marks and the trademark owner OPPLE, thus making it difficult to be confused with other trademarks. Moreover, reference trademark 2 in this case, namely the No.734845 trademark, has no popularity and will not cut the connection between the disputed trademark and the No.1424486 and No.1714252 trademarks as well as the trademarks’ owner, and the relevant public will not confuse the disputed trademark with reference trademark 2 either. Therefore, the disputed trademark and reference trademark 2 don’t constitute similar trademarks in the sense of the Trademark Law, and reference trademark 2 can’t form a barrier to the disputed trademark being registered. The judgment of second instance of this case reached the correct conclusion by considering the particularity of extensive trademarks and by determining whether trademarks are similar at the level of substantial confusion, and the conclusion is also in compliance with the spirit of the Trademark Law.

After the judgment of second instance of this case was made, Beijing Higher People’s Court issued on 22 January 2014 the Guidelines of Beijing Higher People’s Court for Trademark Authorization and Ownership Affirmation in the Trial of Administrative Cases. Article 8 of the Guidelines provides that “Where the underlying registered trademark of a trademark registrant accumulates certain popularity after use, thus causing the relevant public to connect the identical or similar trademark on the same or similar goods whose registration is later applied for with the underlying registered trademark and to believe that goods using the two marks all come from or are somehow related to such trademark registrant, then the business reputation of the underlying registered trademark may extend to the trademark whose registration is later applied for”. This provision summarizes the essence of this case and will also serve to guide the trial of similar cases in the future.

(Courtesy: http://www.wanhuida.com)

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