In the “Zhong Heng and Picture” trademark opposition case represented by Janlea, the Trademark Office supported our opposition reasons of cross-category protection on well-known trademarks. The Trademark Office considered that the pictorial part of the opposed trademark is similar to the well-known trademark of the opposing party, in terms of design concept, presentation, and the overall visual effect. It constituted imitation of the well-known trademark of the opposing party. Based on article 13 paragraph 3 and article 35 in the Trademark Law, the Trademark Office decided not to register the opposed trademark.

Review of the Case:

On March 23rd, 2015, the opposed party applied for registration of the “Zhong Heng and Picture” trademark (hereinafter referred to the opposed trademark) on type 3 “air freshener” product. The opposing party filed an opposition application on the opposed trademark within the statutory period.

The opposing party held that the opposed trademark constituted resemblance with the cited trademarks, “Zhong Hang and Picture”, registered priorly by the opposing party, and that it was an imitation of the “Picture” well-known trademark of the opposing party.

The Trademark Office Considered as Followed during Examination:

The “Picture” trademark, was priorly registered by the opposing party and used on “banking services”, had been recognized as a well-known trademark. The pictorial part of the opposed trademark is similar to the well-known trademark of the opposing party, in terms of design concept, presentation, and the overall visual effect. It constituted imitation of the well-known trademark of the opposing party. Based on article 13 paragraph 3 and article 35 in the Trademark Law, the Trademark Office decided not to register the opposed trademark.

(The opposed trademark)

（Cited Trademark 1）

(Cited Trademark 2, a well-known trademark on type 36 “banking)

Significance:

As a typical imitation of well-known trademark, both the pictorial and the textual part of the opposed trademark constituted resemblance to the pictorial and textual trademarks that were priorly registered by the opposing party. The trademarks of the two parties were very similar in terms of structure and overall visual effect. The texts of these two trademarks were very similar in terms of the shape of the characters. Moreover, “珩” was a rarely used character and customers would usually recognize it by its shape. Therefore, the two individual parts of the opposed trademark both constituted similarity with the well-known trademark of the opposing party. In the examination process, the Trademark Office held that the pictorial part of the opposed trademark is similar to the well-known trademark of the opposing party, in terms of design concept, presentation, and the overall visual effect. Eventually, based on article 13 paragraph 3 of the Trademark Law, the Trademark Office decided to refuse the registration of the opposed trademark and granted cross-category protection for the well-known trademark of the opposing party.

As the symbol of a brand, trademark is only used by consumers to directly distinguish commodities. They do not, however, examine the trademark from a professional angle. If a trademark looks similar to another one, with the limited attention they pay to the trademark, ordinary consumers will assume, normally, that the trademark is related to the other one. This is especially the case if the trademark of another party has achieved high reputation or even the status of a well-known trademark. In such scenario, the fictitious similarity can easily make people to form connection and confuse or misunderstand the source of the product. As a result, the owner of the trademark cannot send an accurate message to the consumers, the highly reputed trademark will decrease in distinctiveness, and the business reputation of the owner will be harmed. This is the result of unfair competition actions, including “dependence on famous trademark” and “free-riding”. It is particularly important to regulation the registration and usage of trademark, so that an orderly trademark management can be maintain and consumers may properly use trademark symbols to distinguish the sources of products and services.

The legal service team, consisting of Li Juan and Zhao Luying from Janlea Intellectual Property, provided the full legal service for the opposing party in this case.

Navigation through the Legal Affairs:

1. The Judgment on Same or Similar Trademarks

To judge whether or not a trademark constitutes sameness or resemblance, one should first decide whether or not the designated product or service for trademark usage constitutes the same or similar product or service. Secondly, one should consider the overall presentation of the trademark, such as its structure, pronunciation and meaning. Using the normal attention relevant public would have for the trademark, one should adopt the method of overall observation and comparison between major elements to judge if the trademark itself constitutes the same or similar trademark. In addition, one should also take into account of the distinctiveness of the trademark, the reputation of the prior trademark, and the possibility for the relevant public to confuse and misunderstand the source of the product (service) if the trademark is used on the same or similar product (service).

In this case, when judging if the opposed trademark constitutes the scenario described in article 13 paragraph 3 of the Trademark Law, the Trademark Office held that the opposed trademark constituted similar symbol with the well-known trademark “Picture” of the opposing party. 

2. Regarding the Cross-Category Protection of Well-Known Trademark in Article 13 Paragraph 3 of the Trademark Law

Trademark Law, Article 13, Paragraph 3: The trademark that is applied for the registration on different or non-similar product, that copy, imitate or translate the well-known trademark of other registered in China, and that mislead the public, possibly harming the rights and interests of the registrant of the well-known trademark, shall be refused to be registered and shall be banned from using. 

In this case, the opposed trademark was designated to be used on type 3 products while the well-known trademark of the opposing party was designated to be used on type 36 “banking” services. The two trademarks were used on different and non-similar products/services; the “Picture” trademark used by the opposing party on “banking” services had been recognized as well-known trademark by the Trademark Office. When the Trademark Office was judging if the opposed trademark constitutes the scenario of copying, imitating or translating the well-known trademark of the opposing party, held that the pictorial part of the opposed trademark constitutes resemblance with the well-known trademark of the opposing party in terms of design concept, presentation, and overall visual effects. It constituted the imitation of the well-known trademark of the opposing party and the scenario described in article 13 paragraph 3 of the Trademark Law.

Well-known trademark plays a crucial role in trademark authorization and affirmation cases. Currently, the recognition of well-known status of trademark is fairly strict in trademark administrative cases. However, the well-known status has profound influence for the protection of trademark and its recognition should not be neglected.

3. Advice Regarding Protecting Business Reputation and Preventing the “Free-Riding” and “Dependence on Famous Trademark” Actions of Others

It is often observed in the market that some symbols are very similar to the famous trademarks of some reputational companies and are used on the same or different products. Such instances are usually the result of some business entities’ subjective and intentional imitation, even copying or plagiarizing, of the famous trademark symbols of others. When the relevant public see such symbols, they will form false connection between the symbols made from intentional imitation and the famous trademarks themselves. They will even relate the imitating trademarks to the company of other. This phenomenon significantly weakens the reputation of the trademark, as well as the corresponding relation between trademark and its owner. In the long term, such phenomenon will certainly reduce the distinctiveness of the famous trademark of other and injure the rights and interests of other, which come from the business reputation accumulated over the years. On the other hand, the rights of interests of consumers, of the owner of the trademark, and of other relevant party of interest will also be harmed. In the end, the famous trademark will be reduced to an ordinary one and the brand value and business reputation accumulated over the years will be destroyed.

Regarding these issues, we suggest that the trademark owner can utilize administrative methods to eliminate the imitating symbols and prevent others from “free-riding” or “depending on famous trademarks”. In practical terms, they can file opposition application, request for invalidation declaration, apply for the recognition of well-known status or administrative punishment, and other methods. They may also protect their rights through legal procedures such as administrative litigation and civil litigation. Businesses must pay great attention the imitating, plagiarizing, copying, and translating behaviors others commit in bad faith to their well-known trademark. They should harshly crack down the trademarks others obtain through inappropriate ways, protect their images and prevent others from harming the business reputation out of bad intention. In reality, the Trademark Office, the Adjudication Board and the court have harshly punished several kinds of unfair competition behaviors of dependence on famous brand and free-riding. They created positive encouragement to the maintaining of trademark management and market order.

To summarize, same or similar trademarks will cause consumers to confuse or misunderstand. Especially when the trademark achieves well-known status, the business reputation and brand value the trademark owner accumulates over the years will be harmed. Trademark owners can use active right protection to protect their brands and reputation