In this article the authors consider the subjective intention of the trademark applicant in trademark right granting and determination cases, in addition to assessing the extent of similarity of logos themselves (such as pronunciation, meaning, component, overall appearance and other factors of trademarks).
It has not been explicitly stipulated by law, but article 12.2 of the Provisions Regarding Several Issues in Trial of Administrative Cases Involving the Granting and Confirmation of Trademark Rights, issued by the Supreme People’s Court, provides that “the subjective intention of the trademark applicant and evidence of actual confusion can serve as the reference factors to judge the possibility of confusion”.
The article addresses the protection of unregistered famous trademarks. However, the Supreme People’s Court mentions in the document Understanding and Application of the Provisions Regarding Several Issues in Trial of Administrative Cases Involving the Granting and Confirmation of Trademark Rights that article 12 of the provisions can be cited to judge the possibility of confusion, if this is involved in the protection of prior trademarks, as described in article 30 of the Trademark Law and prior rights like trade names as prescribed in article 32 of the law. The court has also taken an affirmative attitude in a trademark invalidation case where Sanyou was the agent.
In the case, the applicant for trademark invalidation declaration Ito Luggage has registered the “ito” trademark, which has established certain fame through use on the goods “travel bag (case)” and other commodities in Class 18. The trademark in dispute is “Travel Friends Ito” registered by Yiteng and designated on goods “travel bag (case)” and other commodities.
The Trademark Review and Adjudication Board (TRAB) held that the trademark in dispute was similar to the cited trademark “ito” in component, call and other aspects, and thus constituted a similar trademark. The respondent Yiteng disagreed with the decision made by the TRAB and submitted the case to the court.
In the first instance, the court judged that the trademark in dispute was somewhat different from the cited trademark in overall appearance, call, meaning and other aspects, and was not likely to cause the confusion and misunderstanding among relevant public when it co-existed and was used for the same or similar commodities. Therefore, the trademark in dispute and the cited mark didn’t constitute a similar trademark when they were used for the same or similar commodities.
Sanyou filed an appeal on behalf of Ito Luggage and the court of the second instance believed that the effective prior civil judgment had confirmed that the applicant for the trademark in dispute had highlighted “ito” in the actual use of the trademark in dispute, and the trademark in dispute had caused confusion and misunderstanding with the cited mark in actual use.
Considering the extent of similarity between the trademark in dispute and the cited mark, the extent of similarity between commodities, the subjective intention of the applicant for the trademark in dispute and the evidence of actual confusion, if they co-existed in the market, relevant public would tend to misunderstand that the trademark in dispute and the cited trademark came from the same entity, or their providers had specific connection, thereby confusing and mis-recognizing the sources of commodities. Therefore, the trademark in dispute and the cited mark constituted a similar trademark when they were used for the same or similar commodities.
We can see from the second-instance judgment of the case that the subjective intention of the trademark applicant will affect the final determination of the similarity of trademarks to some extent. Normal judgment as to similarity of trademarks usually involves comparing component, overall appearance, call, meaning and other elements. If a trademark is not easy to be identified as similar with another in this way, but the subjective bad faith of the trademark applicant increases the possibility of confusion or causes the occurrence of actual confusion, the trademark will be possibly identified as a similar trademark.
The Trademark Law has continuously strengthened the combat against trademark squatting in bad faith, judging from the most recent two revisions of the law. When collecting evidence in similar cases involving trademark squatting, the applicant for opposition or declaration of invalidation can attempt to search clues from the perspective of the subjective intention of the trademark squatters, and collect evidence proving the subjective bad faith of the squatter.
For example, the squatter lies in the same region as the owner of the prior trademark, knows and should know the prior trademark owner and the cited trademark, and uses the trademark in bad faith to mislead the public by taking a free ride on the goodwill of the prior trademark owner in marketing and promotion. Then, the applicant can demonstrate the trademark squatter has registered the trademark in dispute out of subjective bad faith, which will possibly cause confusion and misunderstanding among relevant consumers.
In addition to opposition to the trademark squatting itself and applying to declare invalidation, the prior trademark owner also can submit a complaint to the industry and commerce administration authority, or file a civil lawsuit against the infringement or unfair competition behaviour of the trademark squatter, provided that the trademark squatter uses the trademark in dispute out of bad faith in actual commercial activities.
For example, the trademark squatter changes the registered trademark logo, uses a logo that is more similar with the prior trademark or takes a free ride on the goodwill of the prior trademark owner or conducts false marketing. In this way, it can effectively combat the infringement, and besides, the conclusion about similarity of trademark and possibility of confusion drawn by the industry and commerce administration authority, or in the civil litigation procedure, may serve as a reference factor used to judge similarity in the procedure of trademark right granting and confirmation.
Shi Yakai is a partner and Hu Miao is an associate at Sanyou Intellectual Property Agency
Sanyou Intellectual Property Agency
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No.35 Jinrong Street, Beijing 100033, China
Tel: +86 10 8809 1921 / 8809 1922
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