Trademark protection through international registration under the Madrid system

By Claire Zhao, Sanyou Intellectual Property Agency
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In the process of trademark enforcement, based on the right of registered trademark, it should be decided if products accused of infringement are identical or similar to the goods on which the registered trademark is approved for use. In this article, the author, based on a case she represented, discusses the importance of proper description of goods under review and adjudication of trademarks of international registration.

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

A trademark right is a precondition of enforcement. In seeking a trademark registration, an applicant needs to use such wording in compliance with the official goods examination standards as to indicate properly the products on which the trademark is actually used. It is provided in Article 22 of China’s Trademark Law that “the applicant shall indicate on the application the class of goods and describe the goods on which the trademark is to be used, based on the prescribed schedule of classes of goods”. In practice, the Trademark Office of China may not accept a description of goods with broad wording, not included in the Differentiation Table of Similar Goods and Services in the application for trademark registration. However, in the application for territorial extension of international registration of marks under the Madrid system to China, general wording is acceptable. For example, “scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments” under Class 9 are accepted in the application for international registration designating China. Although the application in respect of such goods can be approved, the trademark right holder is required to spend much of its efforts on explaining the connotation and denotation of the descriptions during trademark enforcement in China, to determine the protection scope of the exclusive right to use the trademark.

In a dispute over trademark infringement, we represented a world-renowned valve producer (trademark right holder). Protection of the trademark was granted in China by international registration designating China under the Madrid system. Goods on which the trademark was approved for use fell under Class 7 “pneumatic and hydraulic apparatus and instruments for controlling and tuning, as well as parts thereof” instead of “valves”. Such description of goods was quite general. No group of similar goods was indicated in the trademark archives that the Trademark Office published. The defendant used a trademark completely identical to the registered one of the plaintiff on “valve” goods under Class 7 and owned a registered trademark on the goods falling under Class 7 “valve”. The date of application for registration of the defendant’s trademark was later than the registration date of the plaintiff’s trademark. When the plaintiff filed a lawsuit on trademark infringement, it sought invalidation of the defendant’s registered trademark.

It is prescribed in Article 57 of the Trademark Law that “any of the following acts shall be an infringement of the exclusive right to use a registered trademark: (1) Using a trademark identical to the registered trademark on the same kind of goods without a licence from the registrant of the trademark; (2) using a trademark similar to the registered trademark on the same kind of goods or using a trademark identical to or similar to the registered trademark on similar goods without a licence from the registrant of that trademark, which is likely to cause confusion; …” In accordance with this provision, trademark enforcement, based on the registered trademark right, requires the judgment of whether the defendant’s products infringing on the registered trademark are identical to, or similar to, the goods on which the use of the registered trademark is approved.

Whether for this dispute over trademark infringement or for the related right formulation case, the major focus is whether the “valve” goods accused of trademark infringement and the “pneumatic and hydraulic apparatus and instruments for controlling and tuning, as well as parts thereof”, on which the registered trademark is approved for use, are similar. In accordance with the definition of “valve” in Xinhua Chinese Dictionary, published by the Commercial Press, and other dictionaries, valve is “an apparatus used in pipeline, pump or other machines for regulating and controlling flow, pressure, and flow direction”. This definition is highly consistent with the “pneumatic and hydraulic apparatus and instruments for controlling and tuning, as well as parts thereof”, on which the registered trademark is approved for use. The former falls within the scope of the latter. The accused infringer, however, insisted that “valve” and the goods on which the registered trademark was approved for use were not in the same group of similar goods, and that they should not constitute similar goods in accordance with the Trademark Office’s Differentiation Table of Similar Goods and Services. For the judge and examiner to arrive at a decision, the representing attorney had to demonstrate that the goods on which the trademarks of the plaintiff and defendant were used were similar from the angles of product concept, function, purposes, target customers, production department, and market. In this regard, the attorney produced abundant evidence. The attorney representing the trademark right holder also tried to convince both the examiner and judge that the goods on which the registered trademarks of the plaintiff and defendant were used fell into the group of similar goods. In the end, the court ruled that the goods on which the trademarks of the plaintiff and the defendant were used were similar.

The author learned from this case that, for the purpose of trademark enforcement, a specific description of goods is a must in the application for territorial extension of international registration of marks to China. The applicant should be especially discreet in the wording of the description of the similar group. Description of a similar group, which is also the description of specific goods, can be used in an application for territorial extension (e.g., goods under both Group 2507 and code *250130 are described as “shoes”). In most cases, however, descriptions of groups of similar goods and services are too general. If such descriptions of goods are designated, unnecessary burden of proof will arise in the process of trademark enforcement.

In fact, as the examination period of the national application for trademark registration with the Trademark Office of China is much shorter than that for international registration designating China, the author recommends that the applicant appoint a professional agency to submit directly an application for trademark registration to the Trademark Office of China, to achieve proper trademark protection rapidly.

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

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