Trademark continuation registration and management

By Lu Can, Dentons

Du X applied for a trademark “San Pin Wang (三品王)” (the Prior Trademark) under Class 43, and the trademark was approved for registration in 2003 and approved for use in services including “restaurants”. The trademark was transferred to Guangxi Sanpinwang Catering Management in 2011, but the trademark was cancelled after expiration without renewal.

In 2011, Sanpinwang Company applied for the trademark “Sanpinwang” (the Disputed Trademark) again under Class 43, and the designated services included “restaurants”. The Trademark Office rejected the application for registration of the Disputed Trademark on the grounds that it was similar to the registered trademarks of others such as “Sanpin (三品)”, “Sanpin Farm (三品农庄)” and “Sanpinlou (三品楼)” (the Reference Trademarks).

Lu Can Associate Dentons
Lu Can

This case underwent Trademark Review and Adjudication Board (TRAB) reexamination, and first instance and second instance proceedings. Finally, the Beijing Municipal Higher People’s Court held that the Disputed Trademark was completely consistent with the Prior Trademark; compared with the Reference Trademarks, although it contained the words “Sanpin (三品)”, it still had some differences in the meaning and pronunciation, and the overall combination was somewhat different. After use and publicity, the Prior Trademark was recognized as a famous trademark in Guangxi province in 2010, and enjoyed high popularity among the relevant public. As the Disputed Trademark was designated for use in “restaurants” and other services, it has developed a one-to-one correspondence with Sanpingwang Company and it could be distinguished from the Reference Trademarks without causing confusion and misrecognition of the service source among the relevant public. Therefore, the court reversed the reexamination decision of the TRAB to reject the Disputed Trademark.

In another case, Lacoste applied in 1979 for the trademark “Crocodile Pattern (Head to Right)” (the Prior Trademark, see Figure 1), which was under Class 25 and approved for registration in 1980. The approved goods included “clothes”.

In 1993, Cartelo applied for the trademark “CARTELO and Crocodile Pattern (Head to Left)” (the Reference Trademark, see Figure 2), which was under Class 25 and approved for registration in 2009. The approved goods included “clothes”.

Lacoste applied for international registration of the trademark “Crocodile Pattern (Head to Left)” (the Disputed Trademark, see Figure 3) in 1994, with the basic country of registration being the Republic of France. Later, it applied to the Trademark Office for territorial extension protection and the trademark was approved for use in Class 25 clothes and other goods, with the international registration date in 1995.

In 2012, Cartelo applied to the TRAB to revoke the Disputed Trademark. One of the grounds was that the Disputed Trademark was a malicious imitation of the Reference Trademark, and was therefore similar to the Reference Trademark. The TRAB determined that the two trademarks were not similar to each other, and ruled that the Disputed Trademark be upheld.

This case went through the first instance, second instance as well as retrial by the Supreme People’s Court, which held in its final judgment that: the graphic parts of the Disputed Trademark and the Reference Trademark were similar, but the main identification parts and overall structure made up of various elements were not identical or similar. Observed in isolation with the general attention of the relevant public, the two trademarks would not give rise to confusion and misidentification. Therefore, the Disputed Trademark and the Reference Trademark did not constitute similar trademarks.

The Supreme People’s Court did not respond positively to Lacoste’s claim that the Disputed Trademark was a continuous registration of the Prior Trademark, but it believed that the Disputed Trademark was the basic horizontal mirror inversion of the Prior Trademark, which enjoyed high popularity. The court appeared to have indirectly recognized Lacoste’s claim for a continuous registration of its trademark.

Based on the existing judicial practices, “continuous registration of trademarks” is only an exception and the conditions are very rigorous, so the right holders need to be very prudent. The above cases are typical and have the following enlightenments for rights holders in terms of trademark continuation registration and management:

Firstly, the subsequent trademark needs to be almost identical to the prior trademark. For the rights holder, after it registers the prior trademark, other parties will intentionally or unintentionally register trademarks similar to the prior trademark, especially where the prior trademark has certain popularity, other parties tend to imitate a famous registered trademark. Therefore, for those who want to continue the goodwill of the prior trademark after the change of the trademark, to apply for trademark continuation registration will be an enormous challenge.

Once the subsequent trademark is not identical to the prior trademark, and other parties secure registration of similar trademarks (reference trademarks) prior to the application of the subsequent trademark, whether the subsequent trademark is more similar to the reference trademark or to the prior trademark will be a question open to varied opinions. The above-mentioned two cases indicate that there will be great uncertainty as to whether the subsequent trademark can be approved for registration.

If the rights holder no longer uses the prior trademark or waives the renewal thereof (like in the Sanpinwang case) while the subsequent trademark has not been authorized, the rights holder’s prior trademark might be revoked for not being used for three consecutive years or is cancelled after expiration without renewal, and the subsequent trademark cannot be approved for registration.

Therefore, with respect to the core trademark, the rights holder shall try its best to keep the subsequent trademark the same as the prior trademark when applying for the subsequent trademark. Moreover, the rights holder shall also closely monitor the core prior trademark in time, promptly raise objection to the similar trademarks applied by other parties, and do its utmost to prevent them from being approved for registration.

Secondly, the prior trademark needs to have certain popularity. In the conduct of daily business, the rights holder needs to pay attention to the collection of evidence materials on the use, advertising and publicity, and award-winning of the trademark, for unexpected needs.

Lu Can is an associate at Dentons


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