AFD China Case Study - TM application, which infringes others’ prior rights, may not get registered
A famous sporting goods manufacturer of Netherlands owns the trademark SPIETH, which has obtained quite high reputation and influence after years of use. The trademark owner applied for international registration for this mark and designated China in 2012.
A Chongqing-based enterprise applied for registration of trademark JDN SPIETH in 2015 and later obtained the preliminary approval.
The registrant of the trademark SPIETH (the opponent) detected such situation and filed an opposition application in 2016, with its grounds of application including:
1) The opposed mark is similar to the cited mark prior registered by the opponent and thus shall not be registered according to the provisions of Article 31, Trademark Law.
2) The goods designated by the opposed mark are identical or similar to the goods designated by the cited mark.
3) The registration and use of the opposed mark is liable to cause confusion among concerned public and infringes the trademark right of the opponent.
Chinese Trademark Office deems that the opposed mark JDN SPIETH is used on such goods as “golf clubs; body-training apparatus; machines for physical exercises; board games; protective paddings [parts of sports suits]; toys” etc. in class 28, while the cited mark SPIETH is used on such goods as “physical and sporting goods other than other types; match, sporting, physical and mountaineering apparatus, etc.” in class 28. The distinctiveness part of the opposed mark and cited mark is the letter composition SPIETH, so the concerned public easily consider that the two marks are series trademarks from the same market entity and thus the two marks are similar. The goods designated by the opposed mark, namely, golf clubs; golf bags, with or without wheels; pitch mark repair tools [golf accessories]; golf gloves; balls for games; body-training apparatus; machines for physical exercises; board games; protective paddings [parts of sports suits] are similar to the goods designated by the cited mark in that their functions and purposes, selling channels, consumers, etc. are approximate. Therefore, the two marks are similar trademarks used on similar goods. Other goods designated by the opposed mark are different from those designated by the cited mark with respect to functions and purposes, and thus they are not similar. The registration and use of the opposed mark on non-similar goods will not cause confusion among consumers. Therefore, Chinese Trademark Office decides that the opposed mark shall not be registered on partial goods.
AFD China acts on behalf of the aforesaid sporting goods brand of Netherland in this case.
The key of this case is to argue that the opposed mark and the cited mark that was prior registered by the opponent constitute similar marks used on similar goods. Firstly, the opposed mark completely comprises the literal element of the cited mark, and such literal element is the distinctiveness part of both marks, so the two marks should be deemed as similar marks. Secondly, the sporting goods designated by the opposed mark are similar to those designated by the cited mark with respect to functions and purposes, selling channels and consumers. Therefore, the opposed mark and the cited mark constitute similar marks used on similar goods. In addition, since the cited mark prior registered by the opponent has obtained relatively high fame and brand reputation in the concerned industry, the registration and use of the opposed mark inevitably causes confusion among the concerned consumers and thus harms the lawful rights and interests of the consumers and the opponent.