Recently, the refusal of Beijing Huanxiang Zongheng Company’s application of “Panda Reads Books” trademark received a first-instance trial at Beijing Intellectual Property Court. The litigation request of Beijing Huanxiang Zongheng Company were supported and the court affirmed the plaintiff’s “Panda Reads Books” trademark did not constitute similar trademark with the four cited trademarks. 

Case Summary

The plaintiff, Beijing Huanxiang Zongheng Company, applied for the registration of no. 17432846 “Panda Reads Books and picture” trademark (shown as in appendix 1). The State Trademark Office affirmed the applied trademark as similar trademark with 5 cited trademarks and refused the applied trademark on certain products. 

Afterwards, the plaintiff applied for a review by the Trademark Review and Adjudication Board. The Board held as follows: the main distinguishing part of applied trademark was the Chinese caption of “Panda Reads Books”, whereas the main distinguishing parts of cited trademarks 2 – 5 (shown as in appendix 2) all included the word “Panda”. Therefore, the applied trademark constituted similar trademarks used on similar products with the cited trademarks. The application approvals of other trademarks were different from the situation of this case, and thereby could not become the categorical support for the initial approval of the applied trademark. Hence, the Board affirmed the refusal decision of the Trademark Office.

The plaintiff was unconvinced and filed administrative litigation to Beijing Intellectual Property Court. The agents from Beijing Janlea Law Firm represented the plaintiff in the trialing of this case. 

Court Trial

In the trialing process, the Court partially adopted the representing opinions of the lawyers of Janlea Law Firm and held as follows: although the applied trademark and the 4 cited trademarks all included the texts of shapes of “Panda”, pandas themselves were not capable of looking at books or reading. The applied trademark therefore had strong originality. Pandas were not only well known animals in the nature, but also a common artistic source in trademark symbol design. There were prior trademarks approved for registration, such as “Panda Box” and “Panda Daily”. Also, objectively speaking, the relevant public would not confuse all trademarks related to pandas.

The first-trial court referred to affirmed content in the Supreme People’s Court (2009) Min San Zhong Zi No. 3 Civil Litigation as supplementary support, which was that “the actual value of trademark is to distinguish the source of product but not to allow the trademark owner to simply occupy exclusively specific symbols”. This indicated that the cited trademarks cannot monopolize the use of panda as artistic source for trademark design, simply because they included the text or shapes of “Panda”. The court further affirmed that the coexistence of the applied trademark and the cited trademarks would not cause confusion among the relevant public and did not constituted similar trademarks. In conclusion, the court ruled that the Trademark Review and Adjudication Board shall make another refusal review decision.

Comment

In trademark design, it is common to add objects or elements of the natural world to the components of the trademark. Under the condition that certain objects have been used by others as elements in trademarks for prior registration, the ruling of this case offers guidance for determining whether the later trademark applicant can still apply the same element or not. To be more specific, preexisting objects should not be improperly monopolized in trademark registration. Under the condition that sources of products can be distinguished, even if the accused symbol and its main component constitutes similarity with the trademark registered in prior, it shall not be affirmed as similar trademark. Otherwise, the legislative purpose of the Trademark Law in protecting trademark rights would be violated.

In this case, the large amount of evidence of approved registration for trademarks with the element “Panda” provided the plaintiff, such as the fact that the Trademark Office had approved for registration of 3072 trademarks with panda as structural component, and that the number of trademarks with the element of panda, which were approved for registration on the relevant products in this case, reached 147, further affirmed the validity for trademarks with the element of panda to be approved for registration.

The legal service team led by Xu Jn, the partner and senior lawyer of Beijing Janlea Law Firm offered the full legal service in the litigation of this case for Beijing Huanxiang Zongheng Company.