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AFD Case Study – Application of Article 30 of the Trademark Law

Preface
Examination on trademark similarity is an important part of trademark examination. If a trademark applicant deliberately makes a slight alteration to a registered trademark of others and then applies for registration of the altered trademark, such altered trademark may luckily have a chance to be preliminarily approved for registration. In such cases, the owner of the earlier registered trademark may take advantage of trademark opposition proceeding to detailedly explain to the Trademark Review and Adjudication Board (TRAB) the likelihood of confusion between the two trademarks and thus persuade the TRAB to make a decision not to approve the registration of the altered trademark.

Case Introduction
Our client, during routine monitoring of their registered trademark in China, found that two trademarks filed by another party were similar to their trademark. Considering that the goods associated with the two trademarks were also similar to our client’s goods, our client intended to file an opposition against the two trademarks (“opposed trademarks”). And before filing the opposition, our client wanted to know the chance of success in the opposition. So, they reached out to us for consultation.

We first verified that our client indeed had a registered trademark in China, and the goods associated with the opposed trademarks were substantially similar to our client’s goods, so we determined that Article 30 of the Trademark Law could be used as the main legal basis for opposition. According to trademark examination practice in recent years, whether Article 30 of the Trademark Law is applicable depends on the determination of the likelihood of confusion. When determining the likelihood of confusion, the examiners will comprehensively consider the following factors:
1.    Similarity of trademarks;
2.    Similarity of goods;
3.    Popularity and distinctiveness of the cited mark (i.e. our client’s trademark);
4.    Malicious intent of the applicant of the opposed marks.
Among these factors, factors 1 and 2 are essential elements for the likelihood of confusion, while factors 3 and 4 are motivational elements.

In this case, we found that there was a high level of similarity between our client’s goods and the goods designated by the opposed trademarks. Further, the opposed trademarks did not present distinctly different meanings as a whole compared with our client’s trademark, so they were highly similar to our client’s trademark. After searching, we also found that the applicant of the opposed trademarks had filed a similar trademark earlier which was then opposed and finally not approved for registration. Then they imitated our client’s trademark and filed the two opposed trademarks, which were obviously malicious filings in view of their filing pattern and the popularity of our client’s trademark. Taking into full consideration the above essential elements and motivational elements for the likelihood of confusion, we were optimistic about the chance of success in the opposition. Given our positive opinion on this matter, our client decided to instruct us to prepare and submit the opposition.

After receiving the client’s instructions, we explained the grounds for opposition to the TRAB in a comprehensive and detailed manner based on the above analysis. First of all, we made a detailed discussion on the similarity of the trademarks. Specifically, after studying the elements of the opposed trademarks, we found that the main part of the opposed trademarks are identical to our client’s trademark, while the remaining part thereof are devoid of distinctive character. Thus, the opposed trademarks are likely to make the public confused about the source of goods. Meanwhile, our client’s trademark had a strong reputation around the world in the industry, and the similarity between the opposed trademarks and our client’s trademark is liable to make the public wonder whether there is a connection between the opposed party's goods and our client’s goods. Secondly, we pointed out that the goods designated by the opposed trademarks and our client’s goods belong to the same category, and thus they should be determined as similar goods. Lastly, by submitting the evidence of the opposed party’s repeated trademark filings, we also revealed the opposed party’s malicious intent of taking advantage of the popularity of our client’s goods, and proved that the registration of the opposed trademarks would seriously damage the legitimate rights and interests of our client. Through presentation of arguments and submission of evidence chains, we finally helped our client win the opposition.

AFD Comments
Similarity of trademarks and similarity of goods are essential elements to determine the likelihood of confusion. According to Chinese Classification Table for Similar Goods and Services, under the condition that the goods designated by two trademarks constitute similar goods, elaboration of the similarity of the two trademarks becomes vital to the argument and better showcases a trademark attorney’s expertise. The success of this case is mainly due to our detailed and reasonable presentation of the similarity between the opposed trademarks and our client’s trademark. For example, our trademark attorneys decomposed each of the opposed trademarks into several elements and showed to the TRAB that the elements that are different from our client’s trademark contributes no effect to the distinctiveness of the opposed trademarks and the opposed trademarks should be deemed similar marks to our client’s. All these analyses were of great help in the examiners’ determination of similar trademarks.

In addition, the popularity of the cited trademark and the malicious intent of the opposed party are also elements that the examiners may consider when determining the likelihood of confusion. Therefore, the submission of relevant evidence about the popularity of the cited mark, including evidence about the prior use of the cited mark, also played a role in the success of the opposition. We brought the examiners’ attention to the fact that the opposed party repeatedly imitated our client’s trademark and then applied for registration of such imitated trademarks, which clearly showed their malicious intent. In this way, the examiners may exercise their discretion in favor of our client, which was also an important reason why we won the opposition.

Inspiration and Suggestion
For a trademark owner, if another party files a similar trademark application which is likely to cause confusion, the trademark owner should properly use trademark opposition proceeding to prevent its registration in time. From the perspective of avoiding confusion, the earlier the similar trademark is eliminated from the market, the more favorable it is to the trademark owner.

Should you have any questions about trademark protection, please do not hesitate to contact us.

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