Determination of similar goods in trademark invalidation procedures

By Claire Zhao, Sanyou Intellectual Property Agency

Established trademark rights are the foundation of trademark enforcement. In China, the request for invalidation is one of the trademark affirmation procedures. By analysing the cases she represented, the author preliminarily explores the circumstances under which the Trademark Review and Adjudication Board (TRAB) goes beyond the classification of goods and services in determining goods similarity under article 30 of the Trademark Law in request for invalidation.

赵明珠 Claire Zhao 三友知识产权代理有限公司 律师、商标代理人 Associate, Trademark Attorney Sanyou Intellectual Property Agency
Claire Zhao
Associate, Trademark Attorney
Sanyou Intellectual
Property Agency

In accordance with article 3, paragraph 1, and articles 57 and 58 of the Trademark Law, for rights-based trademark enforcement, the trademark of the rights holder should be registered, unless it is a well-known trademark. It is stipulated in article 45, paragraph 1 of the Trademark Law that, “where a registered trademark stands in violation of the provisions of articles 13.2 13.3, 15, 16.1, 30, 31, and 32 of this law, any prior rights holder or interested party may, within five years from the date of registration of the trademark, file a request with the TRAB for adjudication to declare the registered trademark invalid …”. The prior rights holder or interested party may request invalidation based on its relative rights. The right to the registered trademark in invalidation procedure will be unstable when the case is pending.

The rights holder or the interested party may request for invalidation based on article 30 of the Trademark Law, which provides that “where a trademark application does not comply with relevant provisions in this law, or is identical with, or similar to, a registered or preliminarily approved trademark used on the same kind of goods or similar goods, the Trademark Office shall reject the application and shall not publish the trademark”. This provision is applied not only by the trademark authority in administrative cases of trademark affirmation (opposition and invalidation) but also by the Trademark Office in rejecting a trademark application initiatively. This article will only discuss the TRAB’s adjudication on similarity of goods as provided in article 30 of the Trademark Law in invalidation procedure.

The manual of classification of goods and services is a document compiled by the trademark authority to combine together those goods or services with particular association and are liable to cause confusion, for the need of trademark retrieval, examination, and administration. In principle, the TRAB will refer to the manual of classification of goods and services in reviewing and adjudicating cases, for the purpose of improving review efficiency and exercising unified standards.

However, the TRAB does not strictly follow the applicable manual in adjudicating similarity of goods in practice. Its examination will be based on the particularity of individual case and the principle of avoiding confusion of goods/services origins. In some invalidation cases represented by the author’s team, the TRAB did not strictly follow the manual. For the limited length of this article, the author will only discuss two cases.

Invalidation of “Double-Lin” trademark case No. 12122572. The TRAB did not follow the manual of classification of goods and services and adjudicated that, “non-metal water pipes, plastic ducts used in construction, etc.” under class 19, “metal pipes” under class 6, and “drainage system” under class 11, are similar goods as prescribed in article 30 of the Trademark Law.

The said goods in class 19 are designated by the disputed trademark and the said goods in classes 6 and 11 are designated by the cited trademarks. The particularity of this case is that “the husband of the respondent had been the agent of the petitioner in Heilongjiang prior to the application for registration of the disputed trademark, and the respondent had been aware of the petitioner’s use of the trademark”. However, “the filed evidence cannot prove that the registration application of the disputed trademark satisfies the elements of article 15 of the Trademark Law” (article 15 of the Trademark Law protects against registration squatting by taking the advantage of agency or representation relationship, any other contractual or business relationship, or other relationships).

Invalidation of “FF Jitu” trademark case No. 13451343. The trademark in dispute was approved to use on “cosmetics etc.” under class 3, while the cited trademarks are approved to use on such goods as “cleaning preparations” under class 3 and “cosmetic utensils” under class 21. The TRAB held that “the goods like ‘cosmetics’ designated by the disputed trademark, and the goods ‘essential oil, cosmetic utensils’ designated by the cited trademarks are closely associated in terms of function, usage, sales locations and consumers, and thus they are similar goods.”

It did not strictly follow the manual and declared the trademark in dispute invalid in accordance with article 30 and other provisions of the Trademark Law. The specialty of this case is that the registrant of the disputed trademark had repeatedly applied for registration of the petitioner’s trademarks, and had applied for registration of many well-known trademarks owned by others. It is obvious that the registrant maliciously registered others’ trademarks by improper means.

We can learn from the above cases that the parties concerned in a request for invalidation should consider not only the physical characteristics of the goods, but also the particularity of each individual case in deciding the similarity of goods in accordance with article 30 of the Trademark Law. They should decide and demonstrate the similarity from the perspective of whether co-existence of the disputed trademark and cited trademark on specific goods will cause confusion, and whether application for registration of the disputed trademark was an act in bad faith.

Claire Zhao is an associate and trademark attorney at Sanyou Intellectual Property Agency

Sanyou IP

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