01 Foreword
Generally, registered trademarks would be protected strictly according to classification table. However, if similar trademarks are detected but they are not registered in the same or similar category, are hands tied to protect trademark rights?
Or, there are circumstances when agencies conduct similar trademark monitoring for clients, system often mentions that “although the found trademark is similar to the trademark of clients to a great extent, the client lacks prior right. Please decide to oppose/invalidate it or not on the basis of actual situation.” What is prior right? Could similar trademarks be opposed /invalidated by breaking through similar groups?
02 Classification table and relevant regulations
The Trademark Law of China mainly describes the prior right in Article 30: Where a trademark applied for registration is not in conformity with the relevant provisions of this Law or is identical with or similar to another person’s trademark that has been registered or preliminaries approved on the same kind of goods or similar goods, the Trademark Office shall reject the application and shall not publish it.
Article 31 stipulates that an application for trademark registration may not prejudice the existing prior rights of others, nor may it preempt the registration of a trademark that has been used by others and has certain influence by unfair means.
The basis for the examination of “constituting identical or similar goods and services” referred to in Article 30 is the “Classification of Similar Goods and Services”. In China, in order to maintain the fairness and consistency of examination results and improve examination efficiency, a classification table has been compiled. The Trademark Office strictly relies on the "Classification of Similar Goods and Services" in the examination process, not merely as a reference. Even in procedures such as trademark review and litigation, it is extremely rare to break through the “Classification of Similar Goods and Services”.
Then why is there a “breakthrough” in the classification table to identify trademarks as similar on identical or similar goods and services? According to Article 15 of the Opinions of the Supreme People's Court on Several Issues in the Trial of Administrative Cases Involving Trademark Authorization and Confirmation: When the people’s court examines and judges whether relevant goods or services are similar, it should consider whether the functions, uses, production sectors, sales channels, and consumer groups of the goods are the same or have a strong correlation; whether the purpose, content, method, and target of the services are the same or have a strong correlation; whether there is a strong correlation between the goods and services, and whether it is easy for the relevant public to believe that the goods or services are provided by the same entity, or there is a specific connection between their providers. The International Classification of Goods and Services for the Purposes of the Registration of Marks and the Classification of Similar Goods and Services can be used as references for judging similar goods or services.
Article 16 of the Opinions of the Supreme People's Court on Several Issues in the Trial of Administrative Cases Involving Trademark Authorization and Confirmation: When determining whether trademarks are similar, the people’s court should consider not only the similarity of the constituent elements and the overall appearance of the trademark symbols but also factors such as the distinctiveness and popularity of the relevant trademarks and the degree of association between the goods used, with the criterion of whether it is likely to cause confusion.
03 Successful cases agented by WEIPR
04 Case focus and WEIPR’s suggestion
When WEIPR detects trademarks with a high degree of similarity to our clients’ trademarks, the first consideration is whether the clients’ trademarks have prior rights, as prior rights imply the exclusive right of the applicant to use the trademark and can prohibit others from using it. China’s Trademark Law primarily describes prior rights in Articles 30 and 31. The prior rights mentioned in these two articles refer to rights that have been legally obtained or enjoyed by others before the applicant submits a trademark registration application, and which are protected by law.
If the client’s trademark and the similar trademark constitute similar trademarks on the same or similar goods/services, we generally consider that the client’s trademark has prior rights, and the Trademark Office will generally also consider that the two constitute “similar trademarks used on the same or similar goods” referred to in Article 30 of the Trademark Law during the examination. It can be seen that whether the trademark is designated on the same or similar goods is a key factor related to the success rate of opposition and invalidation.
The crux of the dispute in this case is whether “the disputed trademark and the cited trademarks I, II, III, and IV constitute similar trademarks used on the same or similar goods”. Then why did the court ultimately override the Classification of Similar Goods and Services and determine that they constitute “similar trademarks on the same or similar goods”?
Although the similarity between the cited trademarks and the disputed trademark in terms of the goods they are used on is an important factor in assessing the success rate of opposition/invalidation, in this case, our company considers the following:
1. The cited trademarks and the disputed trademark’s designated goods exhibit significant correlation in terms of functionality, usage, production sectors, and sales channels. Besides strictly adhering to the classification principles outlined in the Classification of Similar Goods and Services, examiners may also transcend these strict limitations, considering the likelihood of cross-similar groups being deemed similar in the minds of relevant publics, particularly consumers.
2. The cited trademarks possess high popularity and a wide range of applications. In actual commercial use, trademarks with high popularity and distinctiveness require significant investments from applicants in terms of labors/talents, material, financial resources, and time to cultivate them from obscurity to fame. It is difficult for others to coincidentally design and adopt trademarks that are highly similar to well-known trademarks.
3. The disputed trademark has not yet been put into use or has limited influence and a narrow range of application. In the judgment of similarity between a trademark that has not been heavily utilized and a prior, highly popular, and distinctive trademark, especially a well-known trademark, the examination will be appropriately stricter.
Therefore, WEIPR recommends that the client file an invalidation request, and ultimately, the Trademark Office determined that the two parties constitute “similar trademarks used on the same or similar goods” as referred to in Article 30, and the disputed trademark was declared invalid.
05 Conclusion
In summary, while the trademark examination to determine whether a trademark constitutes a “similar trademark within the same or similar group” strictly follows the Classification of Similar Goods and Services, the following factors can still be considered to transcend the classification and determine the similarity of designated goods and services, thereby enhancing the success rate of opposition/invalidation: 1. Whether the functions, uses, production sectors, sales channels, and consumer groups of the goods are identical or have significant correlations; whether the purpose, content, method, and target of the services are identical or have significant correlations; whether there is a significant correlation between the goods and services, and whether consumers can distinguish them based on average attention; 2. The distinctiveness and popularity of our cited trademark, especially whether the protection strength of well-known trademarks applies; 3. The popularity and usage of the opponent’s disputed trademark.
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