Gulin County Jiusheng Investment Co., Ltd. is affiliated company to Sichuan Langjiu Group. On 28th June 2018, Gulin County Jiusheng Investment Co., Ltd. has filed the request of invalidation against the trademark “知心郎” (Zhixinlang in pinyin) with registered No. 13163918, which belongs to Sichuan Province Gulin Zhixinlang Wine Sales Co., Ltd. As per examinations by China National Intellectual Property Administration (CNIPA), Beijing Intellectual Property Court and Beijing High People’s Court, the trademark “知心郎” (Zhixinlang in pinyin) has been declared for invalidation. 

Basic Facts: 

28th December 2014, the respondent gained approval to register the trademark “知心郎” (Zhixinlang in pinyin) under registered No. 13163918 (see the picture 1) 

28th June 2018, the applicant entrusted Beijing Trademark Agency Co., Ltd. to file request of declaration for invalidation to China National Intellectual Property Administration (CNIPA).

13th May 2019, China National Intellectual Property Administration (CNIPA) ruled to declare the invalidation on the disputed trademark. 

Afterwards, the respondent refused and filed a lawsuit. On 23rd December 2019, Beijing Intellectual Property Court ruled to reject the lawsuit. 

Afterwards, the applicant refused and filed a lawsuit, on 21st September 2020, Beijing High People’s Court ruled to reject the lawsuit. 

At last, the disputed trademark has been declared for invalidation. 

The disputed trademark and cited trademarks 1-5 are shown below: 

China National Intellectual Property Administration (CNIPA) held that: 

The disputed trademark “知心郎” (Zhixinlang in pinyin) is pure character trademark, completely contains “郎” (Lang in pinyin) of cited trademarks 1-5, moreover, composed similar marks. The approved goods of the disputed trademark “hard drink [liquor]; arrack” and the approved goods of cited trademarks “liquor; arrack” belong to similar or identical goods. The disputed trademark and cited trademarks from1 to 5 concurrent used on goods above may easily cause confusion on the source of goods among the public, has respectively constituted similar trademarks on identical and similar goods stipulated by Article 13 of China’s Trademark Law. 

Beijing Intellectual Property Court held that: 

The disputed trademark is word mark “知心郎” (Zhixinlang in pinyin), from cited trademark 1 to 5 are all word trademarks “郎” (Lang in pinyin), the disputed trademark “知心郎” completely contains “郎” (Lang in pinyin) of cited trademarks 1-5, other components did not form the meaning can make obvious difference. Two trademarks constituted similar marks due to high similarity in terms of words components, sounds meaning and overall appearance. 

As per advertisement and sales status, financial audit report, sales contracts, invoices, taxation certificates, certificates of honour, evidence for well-known trademark, which are offered by Gulin Jiusheng Company, could prove that Gulin Jiusheng Company holds series trademark “郎” (Lang in pinyin), especially, the cited trademark 1 has a certain reputation on the market. The disputed trademark and cited trademarks have been used on similar or identical approved goods, also, marks are similar, while, considering Gulin Zhixinlang Company and Gulin Jiusheng Company both locate in Gulin County, Sichuan Province, if the disputed trademark and cited trademarks coexist on the market, it very easily to cause confusion among the consumers, or to mislead consumers to hold that there may be relevancy between the goods of disputed trademark and Gulin Jiusheng Company, furthermore, to raise confusion and false purchase. Moreover, as per individual case review principle for trademarks, registration of other trademarks should not be the basis for the registration of the disputed trademark. Therefore, the result that the disputed trademark and cited trademarks from 1 to 5 constituted similar trademarks on the similar or identical goods are reasonable. 

Beijing High People’s Court held that: 

The disputed trademark was composed by Chinese characters “知心郎” (Zhixinlang in pinyin), cited trademarks 1 to 5 were composed by Chinese characters “郎” (Lang in pinyin). The disputed trademark completely contains marks of all cited trademarks from 1 to 5, moreover, the disputed trademark and cited trademarks are similar in terms of characters composition, sounds and meaning. Under the condition of isolation comparison, it is difficult for the relevant public to distinguish the goods with general attention. If the disputed trademark and cited trademarks concurrent used on the identical or similar goods, it is easy for the public of confuse and misidentify the sources of the products or to believe that there may be a specific connection among the sources of the goods. The disputed trademark and cited trademarks from 1 to 5 respectively constituted similarity on one kind of identical or similar goods. The original judgement and the complained rule held that the registration of the disputed trademark is in violation of Article 30 of 2014 Trademark Law, this judgement is reasonable. Gulin Zhixinglang Company’s ground for the lawsuit lacks of factual and legal basis, should not be sustained by the court. 

Brief Comments: 

Trademarks that are applied for registration, as per Article 30 of China’s Trademark Law, are not comply with relevant regulations in this law, or to constitute identical or similar trademarks with other people’s registered or initial approved trademarks on the identical or similar goods, the registration of the applied-for trademark shall be rejected by the Trademark Office and shall not be published. 

In this case, first of all, the disputed trademark “知心郎” (Zhixinlang in pinyin) and the cited trademarks from 1 to 5 “郎” (Lang in pinyin) are similar in terms of word composition, sounds and meaning, also, the goods are similar, moreover, they have constituted similarity. Secondly, the financial reports regarding the advertising publishment and sales status, sales contracts and invoices, taxation certificates, honour certificates, evidence of well-known trademarks have been provided by the applicant in the case, can prove the applicant holds series trademarks “郎” (Lang in pinyin), especially, the cited trademark 1 “郎” (Lang in pinyin) has reputation at some certain at the market. While, the applicant and the respondent both locate in Gulin County of Sichuan Province, if the disputed trademark and cited trademarks coexist on the market, it very easily to cause confusion among the consumers, or to mislead consumers to hold that there may be relevance between the goods of disputed trademark and Lang wine goods, furthermore, to cause misidentification and false purchase. As a result, the disputed trademark has been declared for invalidation through examinations of Beijing Intellectual Property Court and Beijing High People’s Court. 

The legal service group led by Mr. ZHANG Hong and Mr. XU Jin, senior partners and senior lawyers of Beijing Janlea Law Firm, offered Gulin County Jiusheng Investment Co., Ltd. with legal service in the whole process of the lawsuit.