Recently, Beijing Municipal Higher People’s Court heard the administrative lawsuit concerning ABB·ASEA· BROWN ·BOVERI· LTD. (hereinafter referred to as ABB Company) appealed against China’s TRAB in terms of decision of opposition review of the trademark “ASEA BROWN BOVERI (in Chinese)” in Class 35, Attorney Zachary Zhang and Shuhua Li, authorized by ABB Company, had appeared in the court for the court proceeding. This case has now come to a conclusion. Claim of ABB who is represented by our firm has been upheld by the court.

According to the examination, Beijing Municipal Higher People’s Court held that, this case focuses on whether the opposed trademark “ASEA BROWN BOVERI(in Chinese)”and the cited trademark “ASEA BROWN BOVERI” constitute similar trademark in terms of similar services.

In the course of the case’s administrative examination, the appellee ascertained that “the opposed trademark and the cited trademark have great difference in respect to words composition and overall appearance, etc. and moreover, evidences presented by the applicant are not enough to support  “ASEA BROWN BOVERI (in Chinese)” and “ASEA BROWN BOVERI” are in one-to-one relationship among relevant public, as a result, the opposed trademark and the cited trademark did not constitute similar trademark.”According to the examination, the first instance court held that “the opposed trademark “ASEA BROWN BOVERI(in Chinese)” has great difference from the cited trademark“ASEA BROWN BOVERI”, furthermore, there are no proofs to show that China’s common consumers tend to correspond them one by one, as a result, two trademarks did not constitute similar trademarks, and furthermore, they will not likely to cause confusion and misidentification to consumers, even though in terms of the identical or similar services.

In the course of the second-instance, Beijing Municipal Higher People’s Court holds that consideration can be given to four fields to ascertain the similarity of trademarks in Chinese and foreign language, namely, definition of judging main body, definition of judging standard, definition of judging methods and definition of foundation. Specialized to this case, although the opposed trademark and the cited trademark are different in terms of Chinese and English, however, corresponding relationship between them can be proved in accordance with proofs presented by appellant. Meanwhile, the third party and ABB Company pertain to electrical equipment industry, however, ABB Company enjoys reputation in the electrical equipment industry, the third party shall know ABB Company’s trademark in Chinese and English. In other hand, whatever the cited trademark “ASEA BROWN BOVERI” or the opposed trademark “ASEA BROWN BOVERI(in Chinese)” are all non-inherent vocabularies in their own context, especially, the composition of the opposed trademark is not normal formation in Chinese context, consequently, the generation and origin of the opposed trademark have more closer corresponding relationship with the cited trademark. At last, considering the third party has ever preemptively registered ABB Company’s trademark and domain name in other classes, as a result, the third party has bad faith to apply for the registration of the opposed trademark. Based on the above all, the court ascertained the opposed trademark and the cited trademark constitute similar trademark, and uphold ABB Company’s claims, and moreover, revoked the original judgement and appealed decision. 

We can see from comparison of opinions of the appealed decision with the original judgement, when the second instance court heard the case, on the basis of abiding by the supreme people’s court’s demands of judging the similar trademarks, combing specialty in ascertaining the similarity of trademarks in Chinese and foreign language, not only status of the composition and use of the opposed trademark and cited trademark are considered, but also considering characteristic of translating English trademark into Chinese, distinctiveness of the cited trademark, the main body’s degree of subjective bad faith of applying for registering the trademark at issue, the fair and reasonable judgement has been rendered.

The typical significance of this case lies in: the court expounds in details considerations in how to ascertain the Chinese trademark and foreign language trademark constitute similarity. Regarding judgement of main body, the public related to designated goods (service) of the trademark at issue shall be the judging main body; In terms of judging standard, the general cognitive ability of the relevant public of the designated goods (service) of the trademark at issue shall be considered; regarding judging method, similarity of trademarks in Chinese and foreign language can be ascertained in terms of direct translation relation of trademarks in themselves, the degree of originality of the cited trademark, status of actual use of prior trademark, corresponding relationship in the marketing operation, status of publicity and use of the trademark at issue; Regarding the judging basis, consideration shall not only be given to whether the trademark in itself constitutes similarity, but also combing consideration of degree of similarity of goods, the main body’s degree of subjective bad faith of applying for the registration of trademark at issue, distinctiveness of cited trademark, notability, degree of influence on the specific goods markets, cognitive scope of the relevant public, as well as other fields.

In China, there are not seldom that the foreign well-known trademarks are translated into Chinese and to be preemptively registered, however, affected by different language culture, if the determination on similarity of trademarks only depends on pronunciation, font style, meaning and overall appearance, it is inevitably divorced from reality, and results are usually unfair if the specialty is not be taken into account, consequently, the litigant cannot be provided with reasonable protection. Absolutely, in the course of hearing the case, Beijing Municipal Higher People’s Court has taken note of specialty in ascertaining the similarity of trademarks in Chinese and foreign language, and the court clearly pointed out that determination on the similarity of trademarks in Chinese and foreign language can be comprehensively judged in terms of direct translation relation of trademarks in themselves, distinctiveness of the cited trademark, status of actual use of the prior trademark, corresponding relation in the marketing operation, as well as the main body’s degree of subjective bad faith of applying for the registration of trademark at issue. The judgement result of this case and Beijing Municipal Higher People’s Court’s systemic explanation on judgement of similarity of trademarks in Chinese and foreign language have demonstration effects on dealing with such cases in the future.