AFD China Case Study - TM application, which infringes others’ prior rights, may not get registered
A famous U.S. kayak manufacturer owns a trademark comprising its trade name, product name and device. After years of use, such trademark has gained quite high fame and influence. The trademark owner applied for international registration for this mark and designated China in January 2015.
A Shanghai-based enterprise applied for registration of a trademark having the same elements in March 2015 and later obtained the preliminary approval.
When the trademark owner (opponent) detected such situation, it filed an opposition application in 2016, with its grounds of opposition including:
1) The opposed mark is similar to the cited mark prior applied 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 application date of the cited mark is prior to that of the opposed mark.
4) 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 is used on such goods as “boats; ship hulls; oars; launches; spars for ships; sculls; water vehicles” etc. in class 12, while the goods designated by the cited mark, which was prior internationally registered by the opponent and designated China, include “kayak equipment, namely, kayak carrying cases and float bags for providing kayak buoyancy” etc. The goods designated by the two marks have same functions and purposes and are similar goods. Moreover, the literal elements and device of the two marks are completely the same. Therefore, the two marks constitute similar trademarks used on similar goods. In August 2017, Chinese Trademark Office decides that the opposed mark shall not be registered.
AFD China acts on behalf of the U.S. kayak manufacturer in this case.
The key of this case is to argue that the opposed mark and the cited mark that was prior applied by the opponent constitute similar marks used on similar goods. Firstly, the opposed mark is roughly identical to the cited mark with respect to literal elements and device and the minute differences are not sufficient to distinguish the two marks from each other, so they shall be deemed as similar marks. Secondly, the goods designated by the opposed mark and those designated by the cited mark totally fall into the same subclass in class 12 and are similar goods. In addition, since the cited mark prior applied 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.