Recently, ASEA Brown Boveri Co., Ltd’s (hereinafter referred to “ABB” Company”) litigation against the Trademark Review and Adjudication Board upon the type 35 “阿西亚布朗勃法瑞” trademark opposition review adjudication was trialed at Beijing Higher People’s Court. Lawyer Zachary Zhang and lawyer Shuhua Li, as the entrusted agents of ABB Company, participated in the litigation of this case. The case is now concluded, and the litigation contention of ABB Company, represented by our firm, received support from the Court.

After trialing, Beijing Higher People’s Court held that the spotlight of the dispute in this case was whether or not the opposed trademark “阿西亚布朗勃法瑞” (the Chinese transliteration of ASEA Brown Boveri) constituted similar trademark with the cited trademark “ASEA Brown Boveri” on similar service.

In the administrative investigation stage of this case, the respondent asserted that, “The opposed trademark and the cited trademark have obvious differences in terms of textual components, overall design and other aspects. Moreover, the evidence submitted by the applicant is not sufficient to prove that ‘阿西亚.布朗.勃法瑞’ and ‘ASEA BROWN BOVERI’ have formulated a strictly corresponding relationship among the relevant public. Therefore the opposed trademark and the cited trademark do not constitute similar trademarks.” After trialing, the first-instance court held as follows: “The opposed trademark‘阿西亚布朗勃法瑞’ and the cited trademark ‘ASEA BROWN BOVERI’have obvious differences and there is no evidence which indicates that the ordinary Chinese consumers will correspond one to the other. Therefore, the two trademarks do not constitute similar trademarks. Even if they are used on the same or similar services, no confusion among the consumers will be incurred.”

During the second-instance trial, Beijing Higher People’s Court held that, in the confirmation of resemblance between a trademark in Chinese and one in foreign language, one could consider four aspects, which were the limitation of the subject, the standards, the methods and the source of the judgment. In this case particularly, although the opposed trademark and the cited trademark had the difference between Chinese and English, according to the evidence submitted by the appellant, it could be proved that there was corresponding relationship between the two. Also, the third party and ABB Company were both in the electrical appliance industry, and ABB Company possessed certain reputation within the industry, the third party should be aware of the Chinese and the English trademarks of ABB Company. On the other hand, neither the cited trademark “ASEA BROWN BOVERI” nor the opposed trademark “阿西亚布朗勃法瑞” was a specific phrase in either linguistic context. The opposed trademark’s structure, in particular, was not a common formulation in the Chinese language of our country. Therefore, the source of the generation of the opposed trademark and the cited trademark had an even closer corresponding relationship. Finally, taking into account that the third party had preemptively registered the trademarks and domain names of ABB Company on other categories, the third’s party’s application should not be considered as friendly. Based on the above, the Court ruled that the opposed trademark and the cited trademark constituted similar trademarks. It supported the litigation requests of the ABB Company and canceled the original ruling and the prosecuted adjudication.

Through comparison between the arguments of the prosecuted adjudication and those of the original ruling, the second-instance court, in the trialing of this case, on the basis of accordance with the Supreme People’s Court’s requirements for judging similar trademarks, took into count of the specificity of judging similarity between Chinese and foreign trademarks. It not only considered the structure and application of the opposed trademark and cited trademark themselves, but also the characteristics of the translation process of an English trademark into Chinese, the distinctiveness of the cited trademark, the subjective bad faith in which the disputed trademark was applied, and related factors, making the just and appropriate ruling. 

The significance of this case as a model example is as follows: The Court thoroughly explained the factors for considering how to judge similarity between a Chinese trademark and a foreign trademark. In terms of the subject, one should consider the relevant public of the products (services) that the disputed trademark is designated to be used on; in terms of the standard, one should consider the normal perceptive ability of the relevant public of the products (services) that the disputed trademark is designated to be used on; in terms of methods, judgment on the similarity between a Chinese trademark and foreign one could be based on the direct translational relationship of the trademarks themselves, the level of originality of the cited trademark, the actual application state of the prior trademark, the corresponding relationship in market operation, the publicity state of the disputed trademark, and related aspects; in terms of the source the judgment, one should not only consider whether or not the trademarks themselves constitute similarity, but also take into account of the similarity of the products, the level of bad faith of the subject who applies for the disputed trademark, the distinctiveness and reputation of the cited trademark, the level of influence on specific products, the perception range of the relevant public and related aspects. 

In our country, it is not uncommon to see preemptive registration of a famous trademark from abroad that is translated into a Chinese trademark. Due to influence of different linguistic cultures, it will not be realistic if similarity between trademarks shall only be judged by the pronunciation, structure, meaning and overall display. If one does not consider the particularity of this type of situation, he or she will often obtain results that are inaccurate and will fail to provide the appropriate protection for the involved parties. Beijing Higher People’s Court, in the trailing of this case, without doubt noticed the particularity of judging similarity between a Chinese Trademark and a foreign trademark and pointed out clearly in the ruling of this case that, when judging if a Chinese trademark and a foreign one were similar, one could consider the direct translational relationship of the trademarks themselves, the originality of the cited trademark, the actual application state of the prior trademark, the corresponding relationship in market operation, the level of bad faith of the subject who applies for the disputed trademark related aspects, making judgment from comprehensive consideration. The ruling result and Beijing Higher People’s Court’s systematic explication on judging the similarity between a Chinese trademark and a foreign one offered guidance for the processing of this type of cases in the future.